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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VOLKSWAGEN GROUP OF AMERICA, INC.,
`Petitioners,
`
`v.
`
`NEO WIRELESS, LLC,
`Patent Owner.
`____________
`
`Case IPR2022-01539
`Patent 10,965,512
`____________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`

`

`
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`THE PETITION FAILS TO ADDRESS INCONSISTENT DISTRICT
`COURT CLAIM CONSTRUCTION POSITIONS. ....................................... 4
`
`A.
`
`In The Co-Pending Court Proceedings, The Accused Infringers,
`Including Petitioner, Agreed To A Joint Construction Process. ........... 5
`
`B.
`
`Proposed Constructions. ........................................................................ 6
`
`III.
`
`PETITIONER FAILS TO SHOW GROUND 1 RENDERS THE CLAIMS
`OBVIOUS. ....................................................................................................... 8
`
`A.
`
`B.
`
`Petitioner Fails To Show Ground 1 Discloses “Cell-Specific
`Pilots.” ................................................................................................... 9
`
`Petitioner Fails To Show That At Least Some Of The Claimed
`Subcarriers Are “Beam-Formed.” ....................................................... 17
`
`IV. PETITIONER FAILS TO SHOW GROUND 2 RENDERS THE CLAIMS
`OBVIOUS. .....................................................................................................23
`
`A.
`
`Petitioner Fails To Show Ground 2 Discloses “Cell-Specific
`Pilots.” ................................................................................................. 24
`
`1.
`
`2.
`
`Petitioner Fails To Show That Ketchum Alone Discloses “Cell-
`Specific Pilots.” ........................................................................ 25
`
`Petitioner Fails To Show That Combination Of Ketchum And
`Li Discloses “Cell-Specific Pilots.” ......................................... 29
`
`B.
`
`Petitioner Fails To Show That The Plurality Of First And Second
`Claimed Subcarriers Are Both Transmitted “In At Least One Of
`The Time Slots.” .................................................................................. 34
`
`V.
`
`CONCLUSION ..............................................................................................45
`
`
`
` i
`
`

`

`
`
`
`
`TABLE OF AUTHORITIES
`
`
`Page(s)
`
`COURT DECISIONS
`
`Comcast Cable Communs., LLC v. Promptu Sys. Corp.,
`838 F. App’x 551 (Fed. Cir. 2021) .......................................................................33
`
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
`800 F.3d 1375 (Fed. Cir. 2015) ............................................................................38
`
`Innova/Pure Water, Inc. v. Safari Water Filtration Sys.,
`381 F.3d 1111 (Fed. Cir. 2004) ..................................................................... 28, 35
`
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
`688 F.3d 1342 (Fed. Cir. 2012) ............................................................................30
`
`In re Kotzab,
`217 F.3d 1365 (Fed. Cir. 2000) ............................................................................34
`
`In re Magnum Oil Tools Int’l, Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016) ............................................................................38
`
`Medrad, Inc. v. MRI Devices Corp.,
`401 F.3d 1313 (Fed. Cir. 2005) ............................................................................35
`
`Microsoft Corp. v. Enfish, LLC,
`662 F. App’x 981 (Fed. Cir. 2016) .......................................................................33
`
`Northern Telecom Ltd. v. Samsung Elecs. Co.,
`215 F.3d 1281 (Fed. Cir. 2000) ............................................................................35
`
`Polaris Indus., Inc. v. Arctic Cat, Inc.,
`882 F.3d 1056 (Fed. Cir. 2018) ............................................................................34
`
`Suprema, Inc. v. ITC,
`742 F.3d 1350 (Fed. Cir. 2013)
`vacated, 796 F.3d 1338 (Fed. Cir 2015) (en banc),
`reinstated in pertinent part, 626 Fed. Appx. 273 (Fed. Cir. 2015) ......................29
`
`Tech. Licensing Corp. v. Videotek, Inc.,
`545 F.3d 1316 (Fed. Cir. 2008) ............................................................................38
`
`Vivid Techs., Inc. v. American Science & Eng’g, Inc.,
`200 F.3d 795 (Fed. Cir. 1999) ................................................................................ 8
`
`
`
` ii
`
`

`

`
`
`
`
`AGENCY DECISIONS
`
`Celltrion, Inc. v. Biogen, Inc.,
`IPR2016-016141, Paper 65 (PTAB Feb. 21, 2018) ..............................................34
`
`Cisco Sys., Inc. et al. v. Oyster Optics, LLC,
`IPR2017-01719, Paper 31 (PTAB Jan. 24, 2019) ................................... 16, 36, 44
`
`Facebook, Inc. v. Uniloc USA, Inc.,
`IPR2017-01524, Paper 7 (Dec. 4, 2017) ...............................................................38
`
`Heart Failure Techs., LLC v. Cardiokinetix, Inc.,
`IPR2013-00183, Paper 12 (Jul. 31, 2013) ............................................................33
`
`Paypal, Inc. v. IOENGINE, LLC,
`IPR2019-00906, Paper 16 (Oct. 29, 2019) ...........................................................31
`
`Samsung Elecs. Co. Ltd. v. KAIST IP US LLC,
`IPR2017-01046, Paper 12 (Oct. 2, 2017) ...................................................... 22, 33
`
`Samsung Elecs. Co. Ltd. v. KAIST IP US LLC,
`IPR2017-01046, Paper 14 (Jan. 22, 2018) ............................................................22
`
`William Wesley Carnes, Sr., Inc. v. Seabord Int’l Inc.,
`IPR2019-00133, Paper 10 (May 8, 2019) .............................................................33
`
`
`
`REGULATIONS
`
`37 C.F.R. § 42.100(b) ................................................................................................ 4
`
`37 C.F.R. §42.104 ................................................................................. 16, 37, 38, 44
`
`
`
`
`
`
`
` iii
`
`

`

`
`
`EXHIBIT LIST
`
`2001 Declaration of William P. Alberth, Jr. [Alberth-Decl.]
`
`2002 William P. Alberth, Jr. Curriculum Vitae [Alberth-CV]
`
`2003
`
`In re Neo Wireless, LLC Patent Litigation, 2:22-MD-03034-TGB, Joint
`Claim Construction Statement [Joint-CC-Statement]
`
`2004
`
`In re Neo Wireless, LLC Patent Litigation, 2:22-MD-03034-TGB, Exhibit
`A - Agreed Litigation Terms [Agreed-Lit.-Terms]
`
`2005
`
`In re Neo Wireless, LLC Patent Litigation, 2:22-MD-03034-TGB, Exhibit
`B - Disputed Litigation Terms [Disputed-Lit.-Terms]
`
`2006
`
`In re Neo Wireless, LLC Patent Litigation, 2:22-MD-03034-TGB, Notice
`of Stipulation Regarding Claim Construction [Stip-Re-CC]
`
`2007 Reserved
`
`2008 Reserved
`
`2009
`
`In re Neo Wireless, LLC Patent Litigation, 2:22-MD-03034-TGB, ECF
`No. 84 [Dkt. 84]
`
`Reserved
`
`2010-
`2014
`
` iv
`
`

`

`
`
`I.
`
`INTRODUCTION
`
`The Petition should be denied because Petitioner fails to demonstrate a
`
`reasonable likelihood of prevailing as to any of the challenged claims. The
`
`Petition challenges independent claims 1, 8, 15, 23 (as well as their dependent
`
`claims) (the “Claims”) under two proposed grounds. Pet., 6.1 The Petition’s
`
`grounds fail.2
`
`Petitioner in Ground 1 relies on a combination of Kim and Tong to challenge
`
`the Claims. Pet., 6. Ground 1 fails for at least two independently sufficient
`
`reasons. First, as discussed in section III.A, infra, Petitioner fails to show that
`
`Ground 1 discloses “cell-specific pilots.” Instead, Petitioner relies on Kim’s cell-
`
`
`1 The Petition also presents a Ground 3, which exclusively challenges
`
`dependent claims and therefore is not addressed in this POPR. Pet., 79-84.
`
`2 For the purposes of this POPR, Patent Owner will discuss the relevant
`
`patentability arguments with regards to independent Claim 1. Independent Claims
`
`8, 15 and 23 recite corresponding limitations, and said arguments equally apply to
`
`those claims. For, e.g., the limitations addressed in this Response, the Petition
`
`treats the independent claims this way also: basing its arguments for independent
`
`Claims 8, 15 and 23 on its arguments for independent Claim 1. Pet., 38-46,
`
`§§ VIII.A.3.(b), (d) (cl. 8), 4. (e), (h) (cl. 15), 5.(b), (d) (cl. 23).
`
` 1
`
`

`

`
`
`specific pilot patterns, where Kim transmits the same pilot(s) from all cells, but
`
`only changes the pattern of the subcarriers that are selected to transmit those same
`
`pilot(s) depending on the cell. However, both the claim language and the Patent’s
`
`specification make expressly clear that cell-specific pilot patterns are prior art that
`
`the invention improves upon, and are quite distinct from the claimed invention.
`
`Second, as discussed in section III.B, infra, Petitioner fails to show how and
`
`why a POSITA would have been motivated to modify its primary reference, Kim,
`
`to utilize beam-forming as disclosed by Tong. Tong teaches adaptive beam-
`
`forming, where a transmitter utilizes channel conditions determined by receiving
`
`feedback from the receiver to arrange which antennas and which layers should be
`
`beam-formed to the user. This is not feasible in Kim, because Kim’s method, and
`
`its pilot signals relied upon by Petitioner, are exclusively utilized for initial
`
`synchronization and cell-search. There is no connection yet established with the
`
`user to then provide feedback to the transmitter to set up the desired beam-forming.
`
`Petitioner fails to address any of the above aspects of its cited references.
`
`Ground 2 similarly fails. Petitioner in its Ground 2 relies on a combination
`
`of Ketchum and Li to challenge the Claims, Pet., 6, but fails for at least two
`
`independently sufficient reasons. First, as discussed in section IV.A, infra,
`
`Petitioner fails to show disclosure of “cell-specific pilots.” Petitioner first relies on
`
`Ketchum’s beacon pilots for the disclosure of cell-specific pilots. Pet., 60.
`
` 2
`
`

`

`
`
`However, as discussed in section IV.A.1, Ketchum is expressly clear that its
`
`beacon pilots are not cell-specific, but are instead an identical universal set of
`
`pilots transmitted from each cell. Petitioner in the alternative proposes to import
`
`cell-specific pilots from Li into Ketchum. Pet., 62. But, as discussed in section
`
`IV.A.2, infra, Petitioner fails to show any reason why a POSITA would have found
`
`it obvious to utilize cell-specific pilots in a modified Ketchum. Petitioner admits
`
`that Ketchum is already a self-sufficient system that achieves all of its necessary
`
`functions with its own pilots. Petitioner fails to point to any deficiency in
`
`Ketchum, or any improvement or benefit that can be achieved in Ketchum through
`
`the use of cell-specific pilots. Petitioner’s generic motivations to combine
`
`Ketchum and Li simply fail to connect any alleged motivation to why a POSITA
`
`would utilize cell-specific pilots in Ketchum.
`
`Ground 2 additionally fails to disclose or render obvious the limitation that
`
`“the plurality of antennas [are] configured to transmit the first plurality of
`
`subcarriers and the second plurality of subcarriers in at least one of the time slots.”
`
`Ex. 1001 [’512 Patent] cl. 1. As discussed in section IV.B, infra, the POSITA
`
`would understand this limitation to require that there must be at least one time slot
`
`that contains both “the first plurality of subcarriers and the second plurality of
`
` 3
`
`

`

`
`
`subcarriers.”3 Petitioner, which had the burden to explain how the claims must be
`
`construed, appears to apply this understanding of the claims, but fails to show its
`
`disclosure in the Petition’s Ground 2.
`
`For all of the foregoing reasons, and as discussed in more detail in this
`
`POPR, the Petition should be denied.
`
`II. THE PETITION FAILS TO ADDRESS INCONSISTENT DISTRICT
`COURT CLAIM CONSTRUCTION POSITIONS.
`
`The Consolidated Trial Practice Guide (at 46-48) notes that in construing the
`
`claims “the Board may take into consideration statements made by a patent owner
`
`or petitioner about claim scope,” and that claim construction developments in
`
`district court may be taken into account in this proceeding when made of record by
`
`the parties. Cf. 37 C.F.R. § 42.100(b) (“Any prior claim construction
`
`determination concerning a term of the claim in a civil action . . . that is timely
`
`made of record in the inter partes review proceeding will be considered.”). Below,
`
`Patent Owner submits the claim construction positions regarding the patent-at-
`
`issue taken in briefing by the parties in the district court proceedings co-pending
`
`with this proceeding.
`
`As noted in the Petition and the parties’ mandatory notices, prior to the filing
`
`of the Petition, Patent Owner initiated district court proceedings enforcing the
`
`
`3 All emphasis in this brief is added unless otherwise stated.
`
` 4
`
`

`

`
`
`patent-at-issue against several alleged infringers, including Petitioner. Since the
`
`Petition in this case was filed, the parties to those court proceedings have filed joint
`
`claim construction briefs taking positions as to the construction of the claims-at-
`
`issue here.
`
`A.
`
`In The Co-Pending Court Proceedings, The Accused Infringers,
`Including Petitioner, Agreed To A Joint Construction Process.
`
`In the pending district court proceedings, all parties “jointly” agreed to a
`
`joint process in which Patent Owner, on the one hand, and the accused infringers,
`
`on the other hand, would confer on which claim terms have no dispute as to claim
`
`construction and what the sides’ respective positions as to how the claims should
`
`be construed, and all defendants agreed to “jointly submit to” Patent Owner by
`
`December 15, 2022, “for each disputed claim term,” “their proposed
`
`interpretations” for “each disputed claim term.” Ex. 2009 [Dkt. 84] 21-22.
`
`Petitioner, together with the other Defendants, exchanged multiple rounds of claim
`
`construction positions with Patent Owner, and the two sides arrived at a list of
`
`agreed-upon claim constructions and a list of claim construction disputes.
`
`However, Petitioner, while acting in concert with its fellow Defendants in these
`
`joint conferences and submissions, has at the same time tried to hold itself separate
`
`from all its fellow Defendants, and, after participating in the meeting and
`
`conferring on the disputed terms, at the last minute (4:00pm Eastern Time the day
`
`the parties’ joint filing of disputed claim terms was due) added a footnote to the
`
` 5
`
`

`

`
`
`joint filing, purporting to state that Petitioner—alone among the accused
`
`infringers—takes no position on how to construe the claims in the court
`
`proceedings. Ex. 2004 [Agreed-Lit.-Terms] n.1; Ex. 2005 [Disputed-Lit.-Terms]
`
`n.1.
`
`Patent Owner challenged Petitioner’s last-minute disavowal of the claim
`
`construction positions it helped develop with the other Defendants. Every one of
`
`the other accused infringers, including Mercedes-Benz USA LLC, Tesla Inc., Ford
`
`Motor Co., Nissan North America Inc., Toyota Motor Corp., General Motors Co.,
`
`FCA US LLC and American Honda Motor Co., Inc., who have been acting in
`
`concert with Petitioner in the claim construction process and jointly preparing its
`
`documents with Petitioner, assert in open court that these are the correct
`
`constructions of these terms of the patent’s claims-at-issue. After meet and confer,
`
`Petitioner and Patent Owner agreed that Petitioner will be bound by the Court’s
`
`construction of any claim of ‘512, and the PTAB’s potential adoption of any such
`
`construction. Exhibit 2006 [Stip-Re-CC].
`
`B.
`
`Proposed Constructions.
`
`The claim construction positions submitted to the district court by the parties
`
`in those proceedings since the Petition was filed are attached as Exhibits 2004
`
`[Agreed-Lit.-Terms] and 2005 [Disputed-Lit.-Terms]. See also Exhibit 2003
`
` 6
`
`

`

`
`
`[Joint-CC-Statement]. With respect to the ’512 patent, the parties dispute the
`
`following phrases:
`
`Claim Language
`
`Proposed Construction of
`Plaintiff (Patent Owner)
`
`Proposed Construction of
`Defendants
`
`“wherein the first plurality
`of subcarriers and the
`second plurality of
`subcarriers are received in
`at least one of the time
`slots”
`
`“wherein the first plurality of
`subcarriers and the second
`plurality of subcarriers are
`received in at least one of the
`same time slots”
`
`“second pilots of a second
`type”
`
`Plain and ordinary meaning.
`No construction necessary.
`
`
`
`
`
`Ex. 2005 [Disputed-Lit.-Terms] 7.
`
`Plain and ordinary meaning.
`
`“pilots possessing a set of
`characteristics common to
`all base stations of the
`system”
`
`Patent Owner’s position as to these terms is consistent with its position in
`
`this proceeding. As to “second pilots of a second type,” Patent Owner’s position is
`
`that the claim term should be given its plain and ordinary meaning. See id. As to
`
`the remaining term, “wherein the first plurality of subcarriers and the second
`
`plurality of subcarriers are received in at least one of the time slots,” Patent
`
`Owner’s arguments are consistent with its proposed construction. See Section
`
`IV.B, infra. Given that Petitioner has chosen not to express any claim construction
`
`analysis in this IPR and has, instead, opted to implicitly apply the same
`
`understanding of the claims as the Patent Owner, it has waived any contrary claim
`
` 7
`
`

`

`
`
`construction position in this litigation. Therefore, the Board does not need to
`
`construe this limitation in this IPR. See Vivid Techs., Inc. v. American Science &
`
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“only those terms need be
`
`construed that are in controversy, and only to the extent necessary to resolve the
`
`controversy”).
`
`III. PETITIONER FAILS TO SHOW GROUND 1 RENDERS THE
`CLAIMS OBVIOUS.
`
`Petitioner in its Ground 1 relies on a combination of Kim and Tong to
`
`challenge the Claims. Pet., 6. Ground 1 fails for at least two independently
`
`sufficient reasons. First, as discussed in section III.A, infra, Petitioner fails to
`
`show that Ground 1 discloses “cell-specific pilots.” Instead, Petitioner relies on
`
`Kim’s cell-specific pilot patterns, where Kim sends the same pilot(s) from all the
`
`cells, but varies the subcarriers that transmit those same pilots depending on the
`
`specific cell. However, both the claim language and the Patent’s specification
`
`make expressly clear that cell-specific pilot patterns like those argued to be
`
`disclosed here are distinct from the claimed invention requiring cell-specific pilots.
`
`Second, as discussed in section III.B, infra, Petitioner fails to show how and
`
`why a POSITA would have been motivated to modify its primary reference, Kim,
`
`to implement beam-forming as disclosed by Tong. Tong teaches adaptive beam-
`
`forming, where a transmitter utilizes channel conditions determined by receiving
`
`feedback from the receiver to arrange which antennas and which layers should be
`
` 8
`
`

`

`
`
`beam-formed to the user. This is not feasible in Kim, because Kim’s method, and
`
`its pilot signals relied upon by Petitioner, are exclusively utilized for initial
`
`synchronization and cell-search. At that time, there was no connection yet
`
`established with the user to then provide feedback to the transmitter to set up the
`
`desired beam-forming. Petitioner fails to address any of the above aspects of its
`
`cited references.
`
`For all of the foregoing reasons, as explained in more detail in the sections
`
`below, Petitioner’s Ground 1 fails.
`
`A.
`
`Petitioner Fails To Show Ground 1 Discloses “Cell-Specific
`Pilots.”
`
`The Claims recite a transmitter that is configured to “insert first pilots of a
`
`first type onto a first plurality of subcarriers, wherein the first pilots are cell-
`
`specific pilots.” Ex. 1001 [’512 Patent] cl. 1. Petitioner relies on Kim’s pilot
`
`patterns for the disclosure of the “first type” of pilots that are “cell-specific.” Pet.,
`
`26 (“The pilots include a first pilot pattern in common for each cell and a second
`
`pilot pattern that is ‘different for each cell.’”). As discussed below, Kim discloses
`
`that the same pilot(s) are transmitted from each cell, and only the pattern of which
`
`subcarriers are selected to transmit those same pilot(s) are modified depending on
`
`the cell. The Patent’s specification and claim language both make clear that cell-
`
`specific pilot patterns, as opposed to cell-specific pilots, fail to disclose this
`
`limitation. Ex. 2001 [Alberth-Decl.] ¶ 33.
`
` 9
`
`

`

`
`
`The Patent’s specification explains that transmitting cell-specific pilot
`
`patterns is prior art that is distinct from, and improved upon by, the claimed
`
`invention because this previous art fails to solve the problem of interference:
`
`One approach to deal with the interference problem has been to
`
`have each cell transmit a particular pattern of pilot subcarriers based
`
`on a certain type of cell-dependent random process. This approach, to
`
`a certain degree, has mitigated the impact of the mutual interference
`
`between the pilot subcarriers from adjacent cells; however, it has not
`
`provided for a careful and systematic consideration of the unique
`
`requirements of the pilot subcarriers.
`
`Ex. 1001 [’512 Patent] 1:62-2:2; see also Ex. 2001 [Alberth-Decl.] ¶ 34.
`
`The Patent’s embodiments further confirm that the invention recited in the
`
`challenged claims relates to cell-specific pilots, not pilot patterns. For example,
`
`the Patent explains that a receiver within the zone of the pth cell in a network
`
`arrangement of m cells receives a signal on subcarrier (i) at time (tk) that is of the
`
`general form:
`
`where “ai,m(tk) and φi,m(tk) denote the signal amplitude and phase, respectively,
`
`associated with the ith subcarrier from the base station of the mth cell.” Ex. 1001
`
`
`
` 10
`
`

`

`
`
`[’512 Patent] 5:1-15; see also Ex. 2001 [Alberth-Decl.] ¶ 35. As Patent Owner’s
`
`expert, Mr. Alberth, explains:4
`
`This equation shows that a receiver within the zone of cell p receives
`
`a signal that comprises two parts: a first part that has the unique
`
`amplitude and phase of cell p, and a second part that is the sum of
`
`signals from other cells m with their unique amplitudes and phases.
`
`When the signal being transmitted by the pth cell is a cell-specific
`
`pilot, the cell-specific information used by the receiver is carried by
`
`the amplitude and phase, ai,p(tk) and φi,p(tk), “and other signals
`
`described by the second term on the right hand side of equation (1)
`
`[above] will be interference.” Ex. 1001 [’512 Patent] 5:17-22; see
`
`also id., 4:8-11 (“Pilot subcarriers, whose phases and amplitudes are
`
`predetermined and made known to all receivers and which are used
`
`for assisting system functions such as estimation of system
`
`parameters”). Thus, the embodiments further make clear that the
`
`invention’s “cell-specific pilots” have cell-specific amplitude and/or
`
`phases carrying cell specific information, and are distinct from cell-
`
`
`4 Mr. Alberth has over 25 years of experience in design, development,
`
`implementation, and manufacturing of mobile phones, including serving as
`
`Motorola’s Chief Technology Officer for Motorola Mobile Devices, where he led
`
`the development of differentiating technology that was integrated into Motorola’s
`
`commercial mobile telephone products. Ex. 2001 [Alberth-Decl.] ¶ 6. He is also a
`
`named inventor on over 100 patents. Id., ¶ 9; see also Ex. 2002 [Alberth-CV].
`
` 11
`
`

`

`
`
`specific pilot patterns, which represent transmitting the same pilot
`
`symbol(s) but only varying the pattern of which subcarriers are
`
`selected to transmit them.
`
`Ex. 2001 [Alberth-Decl.] ¶ 36.
`
`The distinction between cell-specific pilots and cell-specific pilot patterns is
`
`also reflected in the claim language:
`
`The Claims’ plain and ordinary meaning requires that the “pilots” be
`
`cell-specific, not that the pattern by which the pilots are placed be
`
`“cell-specific.” Ex. 1001 [’512 Patent] cl. 1 (“wherein the first pilots
`
`are cell-specific pilots”). This is even more apparent because the
`
`Claims specifically recite a limitation regarding placement of pilots by
`
`reciting “insert[ing]” the pilots “onto a first plurality of subcarriers.”
`
`Id. Yet, even though the Claims recite both pilots and placement of
`
`pilots, they deliberately recite only that the “pilots” are cell-specific,
`
`not that the pattern of insertion of the pilots is cell-specific. Id. In
`
`contrast, a cell-specific pilot pattern would, at best, relate to cell-
`
`specific selection of the “plurality of subcarriers” upon which the
`
`pilots are placed.
`
`Ex. 2001 [Alberth-Decl.] ¶ 37.
`
`Even though both the claim language and the Patent’s specification are clear
`
`that the Claims require cell-specific pilots, not cell-specific pilot patterns,
`
`Petitioner’s Ground 1 expressly and exclusively relies on the disclosure of cell-
`
`specific pilot patterns for the disclosure of this limitation. Pet., 26 (“The pilots
`
` 12
`
`

`

`
`
`include … a second pilot pattern that is different for each cell”); 26 (“Each Q2
`
`pattern is a specific pattern for each cell”); 26 (“Figure 10, reproduced and
`
`annotated below, shows three example pilot patterns”); 27 (“The symbols of each
`
`pilot pattern are inserted onto different subcarriers”); 27 (“As Dr. Min explains,
`
`patterns 1 and Q-1 represent different pilot patterns that are each specific to the
`
`particular cell”); 28 (“Thus, the Q2 (residual) cell-specific pilot patterns are
`
`inserted onto a first plurality of subcarriers”) (internal quotations and citations
`
`omitted).
`
`The reason that Petitioner only relies on the disclosure of cell-specific pilot
`
`patterns in Kim is because Kim does not disclose cell-specific pilots. Instead, Kim
`
`discloses transmitting the same pilots, which are not cell-specific, from different
`
`cells using different patterns of subcarriers to transmit the same pilots depending
`
`on the cell. See infra. Kim discusses, for example, characteristics of pilot symbols
`
`(e.g., interval), but teaches the use of cell-specific pilot patterns, not cell-specific
`
`pilots, to identify each cell:
`
`Fig. 9 shows a case when the number of total subcarriers is N, a
`
`subcarrier interval of a pilot symbol is Nf, and a time interval of the
`
`pilot symbol is Nt. In this instance, the number of pilot symbols each
`th symbol
`
`of which is inserted for each group of Nf subcarriers at the s1
`(i) where c
`910, and the pilot symbols respectively have a pattern ps1,c
`is a cell number, i is the ith pilot subcarrier in the s1
`th OFDM symbol,
`(i) can be varied according to c and s. Therefore,
`and the pattern ps1,c
`
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`
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`the slot synchronization and the frame synchronization are estimated
`
`and the cells are searched by using a specific pilot pattern for each
`
`cell and finding a cross correlation on the available pattern.
`
`Ex. 1004 [Kim] 24:2-11; see also Ex. 2001 [Alberth-Decl.] ¶¶ 38-39.
`
`As Mr. Alberth explains:
`
`Kim consistently discloses only cell-specific pilot patterns, and not
`
`cell-specific pilots. See, e.g., Ex. 1004 [Kim] 3:22-23 (“the second
`
`preamble may have specific patterns for a plurality of cells for the
`
`purpose of cell search”); 4:9-10 (similar); 5:6-7 (similar); 6:3-4
`
`(similar); 4:20-21 (“a cell searcher for using a pattern specific to each
`
`cell”); 7:8-10 (“a pilot pattern of the pilot symbol in the second slot
`
`includes a first pattern in common for each cell and a second pattern
`
`different for each cell”); 21:22-22:1 (“specific patterns for respective
`
`cells”); 24:10 (“using a specific pilot pattern for each cell”); 24:16 (“a
`
`specific pilot pattern is allocated to each cell”).
`
`Other disclosures in Kim are also consistent with a POSITA’s
`
`understanding that the same pilot(s) are transmitted from different
`
`cells, and only the pattern of transmission of those same pilots are
`
`varied depending on the cell. See, e.g., Ex. 1004 [Kim] 36:19 (“a
`
`specific pattern for each cell of the pilot is used”); 38:12 (same);
`
`62:16-17 (“using a specific pattern for each cell of the pilot symbol”).
`
`That Kim utilizes the same pilot(s) for all cells is even more clear in
`
`its embodiments. For example, Kim explains that each cell C1, C2 in
`
`an exemplary embodiment has four antennas. Ex. 1004 [Kim] 31:10-
`
`16. Each antenna (not each cell) has an antenna-specific pilot symbol,
`
` 14
`
`

`

`
`
`AP0, AP1, AP2, AP3. Id.; see also id., 31:3-4 (“A pilot symbol AP0 of
`
`the antenna 0 and a pilot symbol AP1 of the antenna 1 are respectively
`
`inserted ….”). Thus, each cell has an identical set of pilot symbols,
`
`each corresponding to one of the four antennas in the cell: AP0, AP1,
`
`AP2, AP3. The pattern of this identical set of pilot symbols is then
`
`modified depending on each cell, making the pilot patterns cell-
`
`specific. Id., 31:13-16 (“the patterns for changing the positions of the
`
`pilot symbols AP0, AP1, AP2, and AP3 according to the respective
`
`antennas are differently allocated for the respective cells C1 and
`
`C2.”).
`
`This is further shown in Kim’s annotated Fig. 14, where the same
`
`pilots AP0, AP1, AP2, and AP3 are transmitted from each cell, C1 (red)
`
`and C2 (blue), but the pattern of transmission is different for each cell:
`
`Ex. 2001 [Alberth-Decl.] ¶¶ 40-43.
`
`
`
` 15
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`

`

`
`
`Thus, unlike the ’512 Patent’s Claims which require cell-specific pilots,
`
`which the exemplary embodiments achieve by varying pilot signal amplitude and
`
`phase according to the cell specific information, Ex. 1001 [’512 Patent] 5:5-15,
`
`Kim opts to transmit the same pilots but vary the pattern of the subcarriers selected
`
`to transmit those same pilots to obtain cell specific pilot patterns. Ex. 2001
`
`[Alberth-Decl.] ¶ 44.
`
`Despite having the burden to prove its theory of alleged unpatentability,
`
`Petitioner does not acknowledge, let alone address, the fact that cell-specific pilot
`
`patterns do not disclose the claimed cell-specific pilots, even though both the claim
`
`language and the Patent specification make clear that the Claims require cell-
`
`specific pilots, not pilot patterns. 37 C.F.R. §42.104 (b)(3) (Petitioner has the
`
`burden to show “[h]ow the challenged claim is to be construed.”); Cisco Sys., Inc.
`
`et al. v. Oyster Optics, LLC, IPR2017-01719, Paper 31, 23-25 (PTAB Jan. 24,
`
`2019) (rejecting obviousness grounds) (“Petitioner should have provided its claim
`
`construction and corresponding explanation as to why [its reference] satisfies the
`
`limitation in the Petition”).
`
`For all of the foregoing reasons, Petitioner fails to show that its Ground 1
`
`discloses the claimed “cell-specific pilots.”
`
` 16
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`

`

`
`
`B.
`
`Petitioner Fails To Show That At Least Some Of The Claimed
`Subcarriers Are “Beam-Formed.”
`
`The Claims require that “at least some subcarriers of the first plurality of
`
`subcarriers or the second plurality of subcarriers are beam-formed.” Ex. 1001
`
`[’512 Patent] cl. 1; Ex. 2001 [Alberth-Decl.] ¶ 46.
`
`To allege disclosure of this limitation, Petitioner relies on importing beam-
`
`forming from Tong into Kim to beam-form its Q1 and Q2 pilot patterns, arguing:
`
`Kim’s base-station inserts the Q1 and Q2 pilot patterns onto the first
`
`and second pluralities of subcarriers. However, Kim does not
`
`expressly disclose that at least some of these subcarriers are beam-
`
`formed. But Tong discloses this limitation.
`
`Pet., 33. However, as discussed below, Kim’s algorithms, including its Q1 and Q2
`
`pilot patterns, are for initial cell search and synchronization, which cannot be
`
`found to utilize adaptive beam-forming as taught in Tong—because the transmitter
`
`does not yet have an established connection with a known user to receive the
`
`necessary feedback such that it can then beam-form multiple antennas for that user.
`
`Ex. 2001 [Alberth-Decl.] ¶¶ 47-48.
`
`Tong defines beam-forming as a process where “a spare transmit antenna” is
`
`used to redundantly transmit data that is also being transmitted via another antenna
`
`in order to increase the quality of the signal received by the user:
`
`In essence, a spare transmit antenna is used to redundantly transmit
`
`data being transmitted over another of the transmit antennas in a
`
` 17
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`

`

`
`
`manner wherein the primary layer information transmitted from a first
`
`transmit antennas is effectively combined in the channel with the
`
`redundantly transmitted information from the spare transmit antennas
`
`to effectively reinforce transmission of a given layer. The data
`
`transmitted from the spare antenna is weighted to achi