Filed: September 7, 2022
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC., SAMSUNG ELECTRONICS CO., LTD., and SAMSUNG
`ELECTRONICS AMERICA, INC.,
`Petitioners,
`
`v.
`
`SMART MOBILE TECHNOLOGIES LLC,
`Patent Owner.
`____________
`
`Case IPR2022-01004
`Patent 9,614,943
`____________
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`UNDER 35 U.S.C. § 313 AND 37 C.F.R. § 42.107
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC., SAMSUNG ELECTRONICS CO., LTD., and SAMSUNG
`ELECTRONICS AMERICA, INC.,
`Petitioners,
`
`v.
`
`SMART MOBILE TECHNOLOGIES LLC,
`Patent Owner.
`____________
`
`Case IPR2022-01004
`Patent 9,614,943
`____________
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`UNDER 35 U.S.C. § 313 AND 37 C.F.R. § 42.107
`
`
`
`
`
`I.
`II.
`
`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1
`IPR SHOULD NOT BE INSTITUTED .......................................................... 4
`A.
`PETITIONERS FAIL TO DEMONSTRATE A
`REASONABLE LIKELIHOOD OF PREVAILING ON
`GROUNDS 1A-1C ................................................................................ 4
` Byrne Fails to Disclose Limitations 1[e], 5[g], 8[f], and
`12[f] ............................................................................................. 4
` Byrne Fails to Disclose Limitations 1[d], 5[f], 8[e], and
`12[e] ............................................................................................ 9
`PETITIONERS FAIL TO DEMONSTRATE A
`REASONABLE LIKELIHOOD OF PREVAILING ON
`GROUNDS 2A-2C .............................................................................. 14
` The Raleigh-Byrne Combination Fails to Disclose
`Limitations 1[e], 5[g], 8[f], and 12[f] ....................................... 14
` The Raleigh-Byrne Combination Fails to Disclose
`Limitations 1[d], 5[f], 8[e], and 12[e] ....................................... 20
`THE PETITION FAILS TO DEMONSTRATE A
`REASONABLE LIKELIHOOD OF PREVAILING ON ANY
`DEPENDENT CLAIMS ..................................................................... 21
`III. CONCLUSION ..............................................................................................21
`
`
`
`B.
`
`C.
`
`
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`- i -
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`
`
`TABLE OF AUTHORITIES
`
`Cases
`Arendi S.A.R.L. v. Apple Inc.,
`832 F.3d 1355 (Fed. Cir. 2016) .................................................................... passim
`Bae Sys. Info. And Elec. Sys. Integration, Inc. v. Cheetah Omni, LLC,
`IPR2013-00175, 2014 WL 2858243 (P.T.A.B. June 19, 2014) ..........................21
`Belden Inc. v. Berk-Tek LLC,
`805 F.3d 1064 (Fed. Cir. 2015) ............................................................................12
`In re Stepan Co.,
`868 F.3d 1342 (Fed. Cir. 2017) ............................................................................11
`Lenovo Holding Co. v. InterDigital Technology Corp.,
`IPR2020-01514, Paper 11 (P.T.A.B. Apr. 15, 2021) .................................... 12, 13
`SIBIA Neurosciences, Inc., v. Cadus Pharm. Corp.,
`225 F.3d 1349 (Fed. Cir. 2000) ............................................................................11
`
`- ii -
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`
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`I.
`
`INTRODUCTION
`The Board should deny institution because Petitioners fail to show a
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`reasonable likelihood that any of the challenged claims of the ’943 Patent are
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`obvious from the proposed combinations. Each of the grounds that Petitioners rely
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`on fails to disclose key limitations and Petitioners’ attempts to use POSITA
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`knowledge to supplant the lack of disclosure are incorrect and impermissible.
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`In Grounds 1A-1C, Petitioners challenge independent claims 1, 5, 8, and 12
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`(along with associated dependent claims) with Byrne, a reference disclosing a
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`mobile device that can handover calls between cellular and cordless. However,
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`Byrne fails to disclose at least two limitations.
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`First, Petitioners have not shown that Byrne discloses “a processor that is
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`configured to process a first data stream and a second data stream in parallel.”
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`Petitioners point to Byrne’s processor for this limitation, but that processor does not
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`process data streams at all, let alone in parallel. Instead the processor handles control
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`logic for switching between the two modes.
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`Additionally, Byrne fails to disclose the limitation reciting “one or more
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`channels are sampled and clocked individually.” Petitioners recognize that this
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`limitation is not actually disclosed in Byrne but attempt to add it in through
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`obviousness in view of a POSITA. Petitioners attempts here run up against the
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`Federal Circuit and this Board’s requirements that there must be actual evidence that
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`a combination not only could have been made but that a skilled artisan would have
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`been motivated to make the alleged combination. In many crucial places, Petitioners
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`cite to an expert declaration but that declaration states verbatim what was argued in
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`the petition and is supported by no evidence or explanation.
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`In Grounds 2A-2C, Petitioners likewise challenge independent claims 1, 5, 8,
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`and 12 (and their dependent claims) through a combination of Raleigh with Byrne.
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`This attempt fares no better. Raleigh discloses a “space-time signal processing
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`system” that employs a “substantially orthogonalizing procedure (SOP) in
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`conjunction with” one or more antenna elements to overcome multipath effects such
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`as signal fading and delay spread.
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`Raleigh (as well as the Raleigh-Byrne combination) fails to disclose parallel
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`processing of data streams by a processor. First, in their sole support for parallel
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`processing, Petitioners point to an allegation of parallel transmission. Whether or not
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`parallel transmission occurs (and they cite no disclosure of this), Petitioners point to
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`nothing that shows parallel processing. Instead, Petitioners rely on several lines of
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`the ’943 patent’s specification that does not address the issue at all. Second, contrary
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`to Petitioners’ argument, Raleigh does not disclose a single processor that processes
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`multiple data streams. Instead, the disclosure of Raleigh itself makes clear that for
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`each of the “data streams” that Petitioners identify, there is a unique processor that
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`handles that alleged data stream and therefore no single processor that processes a
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`first and second data stream.
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`In addition, as with Byrne, Petitioners acknowledge that Raleigh fails to
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`explicitly disclose “one or more channels are sampled and clocked individually” and
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`attempt to supplant the non-disclosure with the common knowledge of a skilled
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`artisan. Prior precedent by the Federal Circuit and the Board forecloses this attempt
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`as well. Instead of providing evidence in support, Petitioners leave the Board to sift
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`through string cites of nearly 300 lines of specification text and two conclusory
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`paragraphs of an expert declaration, none of which contains any evidence to support
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`Petitioners’ conclusory assertions.
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`These failures undermine Petitioners’ arguments concerning each of the
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`independent claims of the ’943 patent. As a result, Petitioners also fail to meet their
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`burden with respect to the additional grounds (1D, 2D, and 2E) that relate only to
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`dependent claims. Institution should be denied.
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`- 3 -
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`II.
`
`IPR SHOULD NOT BE INSTITUTED
`PETITIONERS FAIL TO DEMONSTRATE A REASONABLE
`A.
`LIKELIHOOD OF PREVAILING ON GROUNDS 1A-1C
`Byrne Fails to Disclose Limitations 1[e], 5[g], 8[f], and 12[f]1
`
`Limitation 1[e] recites “wherein the processor comprises multiple ones of the
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`one or more channels and is further configured to process a first data stream and a
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`second data stream in parallel.” Ex. 1001, 12:7-9. Petitioners argue that “Byrne
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`describes two different channels (e.g., cordless and cellular channels) as two separate
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`communication pathways for two different data streams that are processed
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`separately, just like the ’943 patent.” Pet. 8-9. To satisfy the requirement of a
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`processor with the recited configuration, Petitioners cite to a microprocessor of
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`Byrne that decides whether and when to use cellular or cordless communication
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`modes, as well as the audio switching for them. Pet. 9. But Byrne does not disclose
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`a processor configured to process “a first data stream and a second data stream in
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`parallel” because the processor in Byrne does not process a first data stream
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`(identified by Petitioners as the cordless system) or a second data stream (identified
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`by Petitioners as the cellular system) whatsoever, let alone in parallel.
`
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`1 Limitations 1[e], 5[g], 8[f] and 12[f] are identical in relevant part. Thus, while the
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`arguments are directed to Limitation 1[e], the same arguments apply to the other
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`limitations.
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`First, Byrne’s processor does not process any “data stream.” The processor in
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`Byrne controls call switching logic, not the processing of data streams. Byrne
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`teaches that “[t]he microprocessor 210 illustrated in Figure 2 is adapted to operate
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`in accordance with the flow charts illustrated in Figures 3-4, for controlling the CCT
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`200 as a cordless telephone, a cellular telephone or a cellular cordless phone.” Ex.
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`1008, 7:56-8:2. Figures 3 and 4 are flow diagrams that show the logic for call
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`handling and switching between communication pathways:
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`Ex. 1008, Figs. 3, 4. For example, Byrne describes Figure 3 as illustrating “a flow
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`diagram showing the operational steps taken under control of the microprocessor to
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`monitor for system availability and connect the CCT to the appropriate system” and
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`Figure 4 as showing “a flow diagram showing the operational steps taken under
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`control of the micro-computer whilst a call is in progress.” Ex. 1008, 6:24-29.
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`Nothing in Figures 3 or 4 describe any functionality for processing the incoming
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`data stream. See Ex. 1008, Figs. 3, 4.
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`Further describing the function of the microprocessor, Byrne states that when
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`it is operating as a cordless telephone “control signals from the microprocessor 210
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`enable cordless receiver 221 and cordless transmitter 222. The microprocessor 210
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`also monitors signals from the cordless receiver 221 indicating received signal
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`strength and for detecting receive data, and from the cordless transmitter 222 for
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`sending transmit data. Additionally, the microprocessor 210 monitors control
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`signals from the cordless transceiver 220 for detecting incoming calls (ringing),
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`security codes and broadcast information relevant to the cordless system, and for
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`sending dialing information.” Ex. 1008, 8:16-28 (emphasis added). And when
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`operating as a cellular telephone, Byrne discloses that the microprocessor operates
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`in the same way, but “appropriately modified for the signaling protocols and data
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`encryption used in the cellular system.” Ex. 1008, 8:29-32. In each of these
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`operations, the microprocessor is merely enabling transmitters and receivers or
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`monitoring signals from those systems. Indeed, when “a call has been connected
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`then the CCT 200 microprocessor 210 returns to block 304 and continues monitoring
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`for cellular and cordless systems.” Ex. 1008, 9:27-30. There is no disclosure in
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`Byrne that the microprocessor 210 processes the cellular or cordless signals that
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`Petitioners identify as the first and second data streams.
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`Notably, in attempting to highlight the data streams in Byrne, Petitioners fail
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`to even connect the alleged data streams (the audio) from the antenna to the
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`microprocessor:
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`
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`Pet. 16. Specifically, Petitioners do not trace the antenna 228 down to the BPF (band
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`pass filter) 270, which then goes to the cordless receiver and cordless transmitter.
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`See id. The cordless receiver then shows output to cordless audio that then goes to
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`the audio switch. And incoming audio from the audio switch is sent to the cordless
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`audio block and then to the cordless transmitter before being sent to the BPF and
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`then the antenna. And the cellular side follows the same pathways.
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`Petitioners do not address how the signal from the antenna is processed into
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`an audio signal and then passed to cordless audio 240 without ever interacting with
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`the microprocessor. That is because the cordless and cellular communication
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`components of Byrne do not rely on the microprocessor for processing the incoming
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`cordless or cellular signal – each signal goes between the antenna, band pass filter,
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`and receiver or transmitter, and then to or from the audio component for that mode.
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`See, e.g., Ex. 1008, Fig. 2. In fact, the only thing the microprocessor does regarding
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`the audio is control the audio switch “to link the cordless audio channel 240 or the
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`cellular audio channel 250 to the microphone 261 and loudspeaker 262 as
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`appropriate.” Ex. 1008, 8:39-43. There is no disclosure in Byrne or in the Petition
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`that alleges that the microprocessor processes the data streams into audio. Byrne
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`does not disclose a processor that processes those data streams on a single
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`microprocessor and Petitioners have failed to show that it does.
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`Second, Byrne does not disclose that the cited processor is configured to
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`process the cellular and cordless data streams in parallel. Byrne teaches a radio
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`telephone that is capable of switching between cordless and cellular communication
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`when a given parameter indicates it is preferable to switch a call from one technology
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`to the other. See Ex. 1008, 1:1-3, 30-32. Indeed, the necessity of an audio switch
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`indicates that it is not intended to handle two separate calls at the same time
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`throughout the calls. See, e.g., Ex. 1008, Fig. 2.
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`Not only does Byrne fail to disclose this limitation, it teaches away from it,
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`stating “if components are shared between cellular and cordless parts, cellular and
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`cordless operations can be performed at different times.” Ex. 1008, 8:9-15 (noting
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`that it cannot parallel process).
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`In sum, the microprocessor that Petitioners rely on in Byrne only handles
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`control logic to facilitate handover between cordless and cellular, including
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`switching the audio switch between the two. It does not process the cellular or
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`cordless data streams, let alone process them in parallel.
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`
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`Byrne Fails to Disclose Limitations 1[d], 5[f], 8[e], and
`12[e]2
`Limitation 1[d] recites that “one or more channels are sampled and clocked
`
`individually.” Ex. 1001, 12:5-6. Petitioners recognize that this limitation is not
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`actually disclosed in Byrne and try to supply it with expert testimony, asserting that
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`this limitation would have been obvious based on a POSITA’s knowledge. Pet. 10.
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`2 Limitations 1[d], 5[f], 8[e], and 12[e] are identical in relevant part. Thus, while
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`the arguments are directed to Limitation 1[d], the same arguments apply to
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`Limitation 12[e].
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`The Board should reject Petitioners’ attempt to rely solely on a POSITA’s purported
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`knowledge to satisfy the disclosure missing from Byrne.
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`Petitioners here are making an argument for obviousness based on the
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`“common knowledge” of a POSITA. However, their “common knowledge”
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`argument fails. The Federal Circuit has acknowledged that “common sense and
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`common knowledge have their proper place in the obviousness inquiry.” Arendi
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`S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1361 (Fed. Cir. 2016). However, the use of
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`“POSITA knowledge” is cabined by “at least three caveats.” Id. “First, common
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`sense is typically invoked to provide a known motivation to combine, not to supply
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`a missing claim limitation.” Id. Second, common sense or general knowledge in the
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`art may not provide a limitation missing from the prior art when the limitation at
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`issue “plays a major role in the subject matter claimed,” rather than, “the limitation
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`in question [is] unusually simple and the technology particularly straightforward.”
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`Id. at 1362.
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`Third, common sense “cannot be used as a wholesale substitute for reasoned
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`analysis and evidentiary support, especially when dealing with a limitation missing
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`from the prior art reference specified.” Id. “Whether a rejection is based on
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`combining disclosures from multiple references, combining multiple embodiments
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`from a single reference, or selecting from large lists of elements in a single reference,
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`there must be a motivation to make the combination and a reasonable expectation
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`that such a combination would be successful, otherwise a skilled artisan would not
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`arrive at the claimed combination.” In re Stepan Co., 868 F.3d 1342, 1346 n.1 (Fed.
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`Cir. 2017). Accordingly, even for single reference obviousness, “there must be a
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`showing of a suggestion or motivation to modify the teachings of that reference to
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`the claimed invention in order to support the obviousness conclusion.” SIBIA
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`Neurosciences, Inc., v. Cadus Pharm. Corp., 225 F.3d 1349, 1356 (Fed. Cir. 2000).
`
`Petitioners’ “POSITA knowledge” argument fails each of Arendi’s filters.
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`First, it is undisputed that Byrne does not actually disclose the missing “sampled and
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`clocked individually” limitation and Petitioners are attempting to use “common
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`sense” to read it in. Accordingly, Arendi’s first caveat—that the common knowledge
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`is merely to provide a known motivation to combine, and not to supply a missing
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`claim element—does not apply.
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`Second, the “sampled and clocked individually” limitation plays a major role
`
`in the subject matter claimed in the ’943 patent. In fact, as pointed out in the Petition
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`itself, during prosecution, the ’943 patent claims were specifically allowed because
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`this limitation was added to the claims. Pet. 4. This by itself shows that this limitation
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`plays a major role in the subject matter. The specification also describes the
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`importance of this limitation. For example, “by having each of the data streams
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`sampled at different clock frequencies the performance can be better optimized” in
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`a CT/MD having more than one transmit/receive unit. Ex. 1001, 4:32-38. And
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`“[e]ach channel may be sampled and clocked individually as necessary to optimally
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`process each data stream and combine the individual data packets.” Ex. 1001, 7:50-
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`52. And despite Byrne being drawn to allegedly two different communication
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`systems, there is no disclosure that either would be clocked or sampled individually.
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`Thus, it would be inappropriate, under Arendi’s second caveat, to use a POSITA’s
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`purported knowledge to satisfy the missing limitation here.
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`Third, Petitioners’ arguments and evidence set forth in the Petition are
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`inadequate to explain why a POSITA would have been motivated to modify Byrne
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`in the manner proposed. Indeed, the Petition lacks any analysis at all relating to why
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`a POSITA would have been motivated to modify Byrne as proposed by Petitioners.
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`At best, the Petition tries to show that a POSITA would understand that, having been
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`informed of the missing limitation in hindsight, the POSITA would understand that
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`the art had the capacity to add the relevant limitation. But capacity to perform an
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`action is not the same as motivation to actually do so. “Obviousness concerns
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`whether a skilled artisan not only could have made but would have been motivated
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`to make the combinations or modifications of [the] prior art to arrive at the claimed
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`invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015).
`
`Petitioners’ arguments are similar to those made by the petitioner in Lenovo
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`Holding Co. v. InterDigital Technology Corp., where the Board denied institution
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`because the petitioner failed, despite its use of two additional references in support,
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`to show a motivation to modify the primary reference. IPR2020-01514, Paper 11 at
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`37 (P.T.A.B. Apr. 15, 2021). In Lenovo, the Board recognized that one reference
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`disclosed only general information about a functionality of components and systems,
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`and not the specific function that petitioner sought to modify the primary reference
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`with. Id. In that way, it is like Petitioners’ argument here. Petitioners recite nearly
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`verbatim several paragraphs of the expert’s declaration. See Pet. 11-12 (citing to ¶¶
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`81-85 of Ex. 1003). But in reviewing the information associated with clocking
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`separately, these do not disclose what is alleged (and are often unsupported by the
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`expert). In its key assertion, that “a POSITA would have understood or found
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`obvious that processors . . . supporting different wireless systems, such as Byrne’s
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`cordless and cellular channels, need to be (or would at least benefit from being)
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`individually clocked at different rates to accommodate the computations required for
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`different data rates and communication parameters,” Petitioners rely on ¶ 84 of the
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`expert declaration. Pet. 14. But that paragraph cites no evidence in support. Even
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`taking its “demonstrated above” language, the only paragraphs in the analysis that
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`deal with clocking separately are sections 81-82 (section 83 serves as an alleged
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`example but does not disclose separate clocking, either). In those paragraphs, the
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`expert relies on Exhibits 1038 and 1039. Yet, nothing in either of those exhibits
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`discloses separate clocking. See Ex. 1003, ¶¶ 81-82; see generally Exs. 1038, Ex.
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`1039. Accordingly, Arendi’s third caveat, too, forecloses Petitioners’ conclusory
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`reliance on “POSITA knowledge” to satisfy the missing “sampled and clocked
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`individually” element of limitation 1[d].
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`Permitting common sense to supply a missing limitation “ought to be treated
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`as the exception, rather than the rule.” Arendi, 832 F.3d at 1362. Petitioners fail to
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`proffer any reason to invoke the exception, so the rule applies. Because Petitioners
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`did not offer any reason why a POSITA would have made Petitioners’ proposed
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`modification, Petitioners fail to demonstrate that it is “more likely than not” that any
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`of the challenged claims are unpatentable as obvious over Byrne.
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`B.
`
`PETITIONERS FAIL TO DEMONSTRATE A REASONABLE
`LIKELIHOOD OF PREVAILING ON GROUNDS 2A-2C
`The Raleigh-Byrne Combination Fails to Disclose
`
`Limitations 1[e], 5[g], 8[f], and 12[f]3
`In Grounds 2A-2C, Petitioners assert a combination of Raleigh and Byrne.
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`Petitioners first contend that “[a]s described in Ground 1A, Byrne teaches 1[e]” and
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`therefore a POSITA would have understood or found obvious that limitation 1[e] is
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`disclosed. Pet. 58. But as described above in Section A.1, Byrne does not teach
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`limitation 1[e].
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`3 Limitations 1[e], 5[g], 8[f] and 12[f] are identical in relevant part. Thus, while the
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`arguments are directed to Limitation 1[e], the same arguments apply to the other
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`limitations.
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`Petitioners next assert that Raleigh teaches limitation 1[e], claiming that
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`“Raleigh’s processor processes multiple substreams (first and second data streams)
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`in parallel so that the substreams are streamed simultaneously via the antennas.”
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`Pet. 58. This is incorrect for numerous reasons.
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`First, Petitioners contend that the Transmitter SOP processors (one for each
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`antenna) process the symbol streams to generate “a parallel set of digital time domain
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`signal sequences,” which they contend are the first and second data streams. Pet. 59
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`(citing broadly Ex. 1005, 6:21-7:26). However, Petitioners do not allege that the
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`existence of a parallel set of sequences necessarily infers parallel processing of the
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`sequences—nor could they. There is no discussion or disclosure in Raleigh, in the
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`Petition or in the expert’s declaration of when the sequences are processed relative
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`to the others. Pet. 59. This is sufficient in itself to foreclose institution.
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`Petitioners’ only attempt to establish parallel processing is that “[t]he ‘parallel
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`set of digital time domain signal sequences’ (first and second data streams), once
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`processed at the modulation and RF system, are transmitted using ‘Transmit Antenna
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`Array 50’ in parallel. [Ex. 1005, 7:36-52].” Id. But Petitioners fail to explain how
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`parallel transmission (even if one accepts the unsupported assertion that Raleigh
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`discloses it) teaches parallel processing of the data being transmitted. Nowhere in
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`the cited portions of Raleigh (or anywhere else in Raleigh) is there a disclosure of
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`parallel processing or how parallel transmission necessarily teaches parallel
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`processing. Pet. 58 (citing Ex. 1005, 7:24-52, 7:36-52). Petitioners point to nothing
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`in this language that discloses parallel processing or how transmission schemes
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`indicate parallel processing. Moreover, Petitioners proffer no reasoned explanation
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`to support their premise that a POSITA would know that the transmission is in
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`parallel. Even their reference to the overview of Raleigh (Pet. 58, citing to Section
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`III.D.1 and the near verbatim discussion in the expert declaration) includes only a
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`conclusory statement of that there is transmission in parallel and nothing about
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`parallel processing.
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`Second, Petitioners pick and choose elements of Byrne and Raleigh
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`arbitrarily. In discussing claim 1[e], Petitioners identify that “the processor in the
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`Raleigh-Byrne combination comprises multiple channels and is further configured
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`to process a first data stream (cellular) and a second data stream (cordless) in
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`parallel.” Pet. 57-58 (original emphasis removed, new emphasis added). Then, when
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`it comes to discussing Raleigh, it states that the “parallel set of digital time domain
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`signal sequences” are the first and second data streams. Pet. 59. Even assuming that
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`a symbol stream (which is the original stream from which parallel sets of digital time
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`domain signal sequences are calculated) is a data stream, it is necessarily only for
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`one type of wireless communication—either cellular or cordless. Petitioners cannot
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`even consistently point to what comprises the first and second data streams of the
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`claims. In one paragraph, they are the cordless and cellular streams, whereas in
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`another, they are decomposed orthogonalizations of just one of the streams.
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`Petitioners cannot simply pick and choose elements of one disclosure and re-use
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`them, inconsistently, throughout their argument as they did here.
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`Third, Raleigh fails to teach that there is a processor that comprises multiple
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`ones of the one or more channels. Petitioner points to Figure 1 and its annotation (at
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`Pet. 58):
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`
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`Pet. 58. According to Raleigh, “Fig. 1 depicts a transmitter system in accordance
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`with one embodiment of the present invention.” Ex. 1005, 5:35-36 (emphasis
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`added). That is, Petitioners attempt to harness the transmitter of Raleigh as both the
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`transmitter and the processor as required by the claims. This is arbitrary line-drawing
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`and should be rejected.
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`Fourth, the processor to which Petitioners point does not comprise multiple
`
`ones of the channels. Petitioners point to Figure 1 and its annotation (at Pet. 58) in
`
`an attempt to supply the processor of the communication component:
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`- 17 -
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`Pet. 58. However, Raleigh makes clear that there is no processor that handles
`
`multiple channels. While Petitioners point to element 30 in Figure 1, the
`
`specification makes clear that this is a conceptual block, not a single processor: “The
`
`data plus training symbol stream is then fed into a Transmitter Space-Frequency Pre-
`
`processor (TSFP) block 30.” Ex. 1005, 6:21-23. Figure 9 actually shows what is
`
`occurring within the block. Petitioners understand this but attempt to annotate it
`
`away:
`
`- 18 -
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`
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`
`
`Pet. 57. Specifically, Petitioners attempt to annotate the several Transmitter SOP
`
`processors into a single processor. But the specification contradicts Petitioners: “For
`
`the MIMO system [shown in Figure 9], each transmitter antenna 51 is preceded by
`
`one of MT identical transmitter SOP processors.” Ex. 1005, 13:52-55 (emphasis
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`added). That is, each Transmitter SOP 190 is its own transmitter SOP processor.
`
`This fails to disclose a processor comprising multiple ones of the one or more
`
`channels.
`
`To the extent Petitioners are arguing that bins are the multiple ones of one or
`
`more channels, this too is incorrect. As the patent explains, “[t]he SOP ensures that
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`the N input symbols, in bin 1 through bin N, are transmitted through the channel in
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`such a way that each output symbol is substantially influenced by only the input
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`- 19 -
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`
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`symbol of the same frequency bin.” Ex. 1005, 13:45-49. This refers to a
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`mathematical decomposition and substantial orthogonalization of the channel
`
`representation that describes the channel, as defined by Raleigh as the “input symbol
`
`to output symbol relationship for a communication system.” Ex. 1005, 4:12-13,
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`4:60-67, 13:7-15. In other words, bins are being calculated by the processor, and are
`
`not channels themselves. Thus, they cannot be the channels as recited by the ’943
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`patent.
`
`
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`The Raleigh-Byrne Combination Fails to Disclose
`Limitations 1[d], 5[f], 8[e], and 12[e]4
`With respect to limitation 1[d], Petitioners first claim that “[a]s described in
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`Ground 1A, Byrne teaches 1[d]” and therefore a POSITA would have understood or
`
`found obvious that limitation 1[d] is disclosed. Pet. 56. But as described above in
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`Section A.2, Petitioners have failed to show how or why a POSITA would be
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`motivated to alter Byrne in the manner they suggest.
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`With respect to Raleigh, as in Grounds 1A-1C, Petitioners concede that the
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`requirement that each channel be sampled and clocked individually is not disclosed.
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`Pet. 57. Instead, Petitioners rely on the same POSITA’s purported knowledge to
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`4 Limitations 1[d], 5[f], 8[e], and 12[e] are identical in relevant part. Thus, while
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`the arguments are directed to Limitation 1[d], the same arguments apply to
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`Limitation 12[e].
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`- 20 -
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`satisfy the disclosure missing from Raleigh. Their “common knowledge” argument
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`should be rejected for the reasons set forth above regarding Byrne, all of which apply
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`to their “POSITA knowledge” argument based on Raleigh. Moreover, the entirety
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`of the Petition’s argument covers only five lines of text and then string cites to
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`roughly 293 lines of specification text and two conclusory paragraphs in an expert
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`declaration. The argument for institution must be included in the petition itself and
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`not left for the Panel to hunt to find. Bae Sys. Info. And Elec. Sys. Integration, Inc.
`
`v. Cheetah Omni, LLC, IPR2013-00175, 2014 WL 2858243, at *13 (P.T.A.B. June
`
`19, 2014). Here again, Petitioners fail to meet their burden.
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`C. THE PETITION FAILS TO DEMONSTRATE A
`REASONABLE LIKELIHOOD OF PREVAILING ON ANY
`DEPENDENT CLAIMS
`Petitioners’ analysis for dependent claims 2-4,6, 7, 9, 13-17, and 18-20 fail to
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`cure the deficiencies for independent claims 1 and 12. Thus, for the same reasons
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`stated above for independent claims 1, 5, 8, and 12, Petitioners fail to make a prima
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`facie case of obviousness for dependent claims 2-4,6, 7, 9, 13-17, and 18-20.
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`For these reasons, Petitioners failed to meet their burden to show a reasonable
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`likelihood that it will prevail on any of its grounds.
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`III. CONCLUSION
`For the foregoing reasons, Patent Owner respectfully requests the Board deny
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`Petitioner’s request for Inter Partes Review of the ’943 patent.
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`- 21 -
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`Dated: September 7, 2022
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`
`
`Respectfully submitted,
`
`/Rex Hwang/
`Rex Hwang (Reg. No. 56,206)
`SKIERMONT DERBY LLP
`633 West 5th Street, Suite 5800
`Los Angeles, CA 90071
`P: 213-788-4500/F: 213-788-4545
`Lead Counsel for Patent Owner
`
`Todd Martin (Reg. No. 78,642)
`Steve Udick
`(pro hac vice application to be submitted)
`SKIERMONT DERBY LLP
`1601 Elm Street, Suite 4400
`Dallas, TX 75201
`P: 214-978-6600/F: 214-978-6621
`Back-Up Counsel for Patent Owner
`
`Philip J. Graves
`(pro hac vice application to be submitted)
`Greer N. Shaw
`(pro hac vice application to be submitted)
`GRAVES & SHAW LLP
`355 S. Grand Ave., Suite 2450
`Los Angeles, CA 90071
`Tel: (213) 214-5101
`Back-Up Counsel for Patent Owner
`
`
`
`- 22 -
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`
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`CERTIFICATE OF WORD COUNT
`
`Under the provisions of 37 C.F.R. § 42.24(d), the undersigned hereby certifies
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`that the Microsoft Office word count for the foregoing Patent Owner’s Preliminary
`
`Response Under 35 U.S.C. § 313 and 37 C.F.R. § 42.107, excluding the table of
`
`contents, table of authorities, claim listing, certificate of word count, and certificate
`
`of service, totals 4,334 words, which is less than the 14,000 words allowed under 37
`
`C.F.R. § 42.24(b)(1).
`
`
`
`Dated: September 7, 2022
`
`
`
`
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`Respectfully submitted,
`
`/Rex Hwang/
`Rex Hwang (Reg. No. 56,206)
`Lead Counsel for Patent Owner
`
`
`
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`- 23 -
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), I certify that I caused to be served on the
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`counsel for Petitioners a true and correct copy of the foregoing Patent Owner’s
`
`P
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