`
`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 RESPONSE
`
`
`
`
`
`
`
`
`
`
`
`

`

`
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`II.
`
`III.
`
`B.
`
`2.
`
`2.
`
`INTRODUCTION .......................................................................................... 1
`THE PETITION FAILS BECAUSE PETITIONER RELIES ON AN
`OVERSTATED LEVEL OF ORDINARY SKILL IN THE ART. ................ 1
`PETITIONER FAILS TO SHOW GROUND 1 RENDERS THE CLAIMS
`OBVIOUS (ALL CLAIMS). .......................................................................... 5
`Petitioner Fails To Show Ground 1 Discloses “Cell-Specific
`A.
`Pilots.” .................................................................................................. 5
`“Cell-Specific Pilots” Require More Than The Prior Art Cell-
`1.
`Specific Pilot Patterns The Invention Improved Upon. .............. 6
`Petitioner Fails To Show That Ground 1 Discloses “Cell-
`Specific Pilots.” ........................................................................ 16
`Petitioner Fails To Show That At Least Some Of The Claimed
`Subcarriers Are “Beam-Formed.” ...................................................... 22
`Tong Discloses Adaptive Beamforming, Which Requires
`1.
`Advance Knowledge Of User’s Channel Condition. ............... 23
`Petitioner Fails To Show How Kim’s Initial
`Synchronization And Cell Search Pilots Can Implement
`Adaptive Beamforming. ........................................................... 27
`IV. PETITIONER FAILS TO SHOW GROUND 2 RENDERS THE CLAIMS
`OBVIOUS (ALL CLAIMS). ........................................................................ 32
`Petitioner Fails To Show Ground 2 Discloses “Cell-Specific
`A.
`Pilots.” ................................................................................................ 33
`Petitioner Fails To Show That Ketchum Discloses “Cell-
`1.
`Specific Pilots.” ........................................................................ 33
`Petitioner Fails To Show That Combination Of Ketchum And
`Li Discloses “Cell-Specific Pilots.” ......................................... 41
`Petitioner Fails To Show That The First And Second Claimed
`Subcarriers Are Transmitted “In At Least One Of The Time
`Slots.” .................................................................................................. 46
`
`2.
`
`B.
`
` i
`
`

`

`
`
`B.
`
`1.
`
`2.
`
`V.
`
`The Claims Require At Least “One Of The Time Slots” That
`Contains “The First Plurality Of Subcarriers And The Second
`Plurality Of Subcarriers.” ......................................................... 48
`Petitioner Fails To Show That Its Ground 2 Discloses
`Transmitting The First And Second Subcarriers “In At Least
`One The Time Slot.” ................................................................. 51
`PETITIONER FAILS TO SHOW OBVIOUSNESS OF DEPENDENT
`CLAIMS FOR FURTHER REASONS. ....................................................... 59
`Petitioner Fails To Show Obviousness Of Claims 3, 10, 17, And 25
`A.
`(Ground 1). ......................................................................................... 59
`Petitioner Fails To Show Obviousness Of Claim 5, 12, 21, And 29
`(Ground 3). ......................................................................................... 60
`VI. CONCLUSION ............................................................................................. 62
`
`
` ii
`
`

`

`
`
`TABLE OF AUTHORITIES
`
`
`Page(s)
`
`
`COURT DECISIONS
`In Re Abbott Diabetes Care Inc. ,
`696 F.3d 1142 (Fed. Cir. 2012) ............................................................................ 14
`Choon's Design, LLC v. IdeaVillage Prods. Corp.,
`776 Fed App'x 691 (Fed. Cir. 2019) .................................................................... 15
`Comcast Cable Communs., LLC v. Promptu Sys. Corp.,
`838 Fed. Appx. 555 (Fed. Cir. 2021) ................................................................... 46
`Daiichi Sankyo Co., Ltd. v. Apotex, Inc.,
`501 F.3d 1254 (Fed. Cir. 2007) .............................................................................. 3
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
`800 F.3d 1375 (Fed. Cir. 2015) ............................................................................ 59
`In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig.,
`676 F.3d 1063 (Fed. Cir. 2012) ............................................................................ 61
`Innova/Pure Water, Inc. v. Safari Water Filtration Sys.,
`381 F.3d 1111 (Fed. Cir. 2004) ............................................................................ 51
`Irdeto Access, Inc. v. Echostar Satellite Corp..,
`383 F.3d 1295 (Fed. Cir. 2004) ............................................................................ 15
`Kinetic Concepts, Inc. v. Blue Sky Med. Grp., Inc.,
`554 F.3d 1010 (Fed. Cir. 2009) ............................................................................ 15
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
`688 F.3d 1342 (Fed. Cir. 2012) ............................................................................ 44
`In Re Kotzab,
`217 F.3d 1365 (Fed. Cir. 2000) ............................................................................ 47
`In Re Magnum Oil Tools Int’l, Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016) ............................................................................ 59
`Medrad, Inc. v. MRI Devices Corp.,
`401 F.3d 1313 (Fed. Cir. 2005) ............................................................................ 52
`Microsoft Corp. v. Enfish, LLC,
`662 Fed. Appx. 981 (Fed. Cir. 2016) ................................................................... 46
`
` iii
`
`

`

`
`
`Northern Telecom Ltd. v. Samsung Elecs. Co.,
`215 F.3d 1281 (Fed. Cir. 2000) ............................................................................ 49
`Polaris Indus., Inc. v. Arctic Cat, Inc.,
`882 F.3d 1056 (Fed. Cir. 2018) ............................................................................ 47
`Suprema, Inc. v. ITC,
`742 F.3d 1350, 1368 (Fed. Cir. 2013)
`vacated, 796 F.3d 1338 (Fed. Cir 2015) (en banc),
`reinstated in pertinent part, 626 Fed. Appx. 273 (Fed. Cir. 2015) ...................... 43
`Tech. Licensing Corp. v. Videotek, Inc.,
`545 F.3d 1316 (Fed. Cir. 2008) ............................................................................ 59
`Wasica Finance GmbH v. Continental Automotive Sys., Inc.,
`853 F.3d 1272 (Fed. Cir. 2017) ............................................................................ 59
`Wi-LAN, Inc. v. Apple Inc.,
`811 F.3d 455 (Fed. Cir. 2016) .............................................................................. 13
`Wisconsin Alumni Res. Found. v. Apple Inc.,
`905 F.3d 1341 (Fed. Cir. 2018) ............................................................................ 15
`AGENCY DECISIONS
`Advanced Micro Devices, Inc. v. LG Elecs. Inc.,
`IPR2015-01409, Paper 30 (PTAB Feb. 2, 2017) ................................................. 59
`Celltrion, Inc. v. Biogen, Inc.,
`IPR2016-016141, Paper 65 (PTAB Feb. 21, 2018) ............................................. 47
`Cisco Sys., Inc. et al. v. Oyster Optics, LLC,
`IPR2017-01719, Paper 31 (PTAB Jan. 24, 2019) .......................................... 20, 48
`Dell Inc. v. NEO Wireless, LLC,
`IPR2021-01468, Paper 12 (March 14, 2022) ......................................................... 2
`Dell Inc. v. NEO Wireless, LLC,
`IPR2021-01480, Paper 11 (March 16, 2022) ......................................................... 2
`Dell Inc. v. NEO Wireless, LLC,
`IPR2021-01486, Paper 10 (March 16, 2022) ......................................................... 2
`Dexcom, Inc. v. WaveForm Techs., Inc.,
`IPR2017-01051, Paper 48 (PTAB Sept. 12, 2018) .............................................. 59
`Dionne v. Liotta,
`Int. 104,333, Paper 119 (PTAB Oct. 31, 2001) (per curiam) (informative) .......... 3
`
` iv
`
`

`

`
`
`DISH Network LLC v. Sound View Innovations LLC,
`IPR2020-01041, Paper 41 (PTAB Jan. 18, 2022) ................................................ 59
`Facebook, Inc. v. Uniloc USA, Inc.,
`IPR2017-01524, Paper 7 (Dec. 4, 2017) .............................................................. 58
`Heart Failure Techs., LLC v. Cardiokinetix, Inc.,
`IPR2013-00183, Paper 12 (Jul. 31, 2013) (denying institution) .......................... 46
`Paypal, Inc. v. IOENGINE, LLC,
`IPR2019-00906, Paper 16 (Oct. 29, 2019) ........................................................... 44
`Samsung Elecs. Co. Ltd. v. KAIST IP US LLC,
`IPR2017-01046, Paper 12 (Oct. 2, 2017) ............................................................. 31
`Samsung Elecs. Co. Ltd. v. KAIST IP US LLC,
`IPR2017-01046, Paper 14 (Jan. 22, 2018) ..................................................... 31, 47
`Volkswagen Grp. of Am., Inc. v. NEO Wireless, LLC,
`IPR2023-00086, Paper 7 (June 16, 2023) .............................................................. 2
`William Wesley Carnes, Sr., Inc. v. Seabord Int’l Inc.,
`IPR2019-00133, Paper 10 (May 8, 2019) (denying institution) .......................... 47
`Xerox Corp. v. Bytemark, Inc.,
`IPR2022-00624, Paper 9 (Aug. 24, 2022) (precedential) ...................................... 2
`RULES
`37 C.F.R. § 42.104 (b)(4) ........................................................................................ 58
`37 C.F.R. §42.104 (b)(3) ................................................................................... 19, 49
`
`
`
`
`
`
`
`
` v
`
`

`

`
`
`EXHIBIT LIST
`
`2001 Declaration of William P. Alberth, Jr. [Alberth-Decl.]
`
`2002 William P. Alberth, Jr. Curriculum Vitae [Alberth-CV]
`
`2003
`
`2004
`
`2005
`
`2006
`
`In re Neo Wireless, LLC Patent Litigation, 2:22-MD-03034-TGB, Joint
`Claim Construction Statement [Joint-CC-Statement]
`
`In re Neo Wireless, LLC Patent Litigation, 2:22-MD-03034-TGB, Exhibit
`A - Agreed Litigation Terms [Agreed-Lit.-Terms]
`
`In re Neo Wireless, LLC Patent Litigation, 2:22-MD-03034-TGB, Exhibit
`B - Disputed Litigation Terms [Disputed-Lit.-Terms]
`
`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]
`
`2010 Second Declaration of William P. Alberth, Jr. [Alberth-2nd-Decl.]
`
`2011 Deposition Transcript of Dr. Min [Min-1st-Depo.]
`
`
`
`
`
`All emphases herein are added unless otherwise stated.
`
` vi
`
`

`

`
`
`I.
`
`INTRODUCTION
`
`Petitioner fails to meet its burden to show unpatentability of any of the
`
`challenged claims. The Petition challenges independent claims 1, 8, 15, 23 (as well
`
`as claims depending therefrom) (the “Claims”) under Grounds 1 and 2, and
`
`dependent claims 5, 12, 21 and 29 under Ground 3. Pet., 6. All grounds fail as
`
`explained in this Response.1
`
`II. THE PETITION FAILS BECAUSE PETITIONER RELIES ON AN
`OVERSTATED LEVEL OF ORDINARY SKILL IN THE ART.
`
`Petitioner relies upon an improperly elevated level of ordinary skill in the
`
`art. Petitioner’s expert, Dr. Min, proposes that the POSITA:
`
`would have a bachelor’s degree in electrical engineering, computer
`engineering, computer science, or an equivalent field, … as well as at
`least 3-5 years of academic or industry experience in mobile wireless
`communications, or comparable industry experience.
`
`Ex. 1003 [Min-Decl.] ¶ 65.
`
`At the time of filing of the Petition, the Board had already found the level of
`
`ordinary skill in a series of patents with related technology to this Patent to be a
`
`
`1 Unless noted otherwise, Patent Owner discusses 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.
`
`
`
`1
`
`

`

`
`
`“Bachelor’s degree in an academic area emphasizing electrical engineering or a
`
`similar discipline,” and only “two years of experience in the field working with,
`
`teaching, or researching wireless communication networks.” See, e.g., Dell Inc. v.
`
`NEO Wireless, LLC, IPR2021-01468, Paper 12, 9 (March 14, 2022); Dell Inc. v.
`
`NEO Wireless, LLC, IPR2021-01480, Paper 11, 7 (March 16, 2022); Dell Inc. v.
`
`NEO Wireless, LLC, IPR2021-01486, Paper 10, 11-12 (March 16, 2022).
`
`Moreover, the Board recently rejected Petitioner’s identical incorrect
`
`proposed level of ordinary skill in another IPR between the same parties and in
`
`connection with a patent in a similar field, finding that it was unsupported and
`
`inconsistent with the level of ordinary skill reflected in the prior art of record.
`
`Volkswagen Grp. of Am., Inc. v. NEO Wireless, LLC, IPR2023-00086, Paper 7, 10-
`
`12 (June 16, 2023).2
`
`Here, Dr. Min provided no analysis or evidence to support his departure
`
`from the Board’s previous findings and his proposed much higher level of ordinary
`
`skill in the art. His opinion, therefore, is entitled to little weight. Xerox Corp. v.
`
`Bytemark, Inc., IPR2022-00624, Paper 9, 15 (Aug. 24, 2022) (precedential)
`
`
`2 Notably, the level of ordinary skill by the two experts in the two IPRs filed
`
`by Petitioner were substantially identically phrased. Compare Ex. 1003 [Min-
`
`Decl.] ¶ 65 with Volkswagen Gp. Of Am. Inc., IPR2023-00086, Paper 7, 10-12.
`
`
`
`2
`
`

`

`
`
`(rejecting an expert’s conclusory assertion); Dionne v. Liotta, Int. 104,333, Paper
`
`119, 5 (PTAB Oct. 31, 2001) (per curiam) (informative) (rejecting “the conclusory
`
`statements of [a party’s] experts” as “evidence in support of its alleged skill
`
`level”); Daiichi Sankyo Co., Ltd. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir.
`
`2007).
`
`Furthermore, as Patent Owner’s expert, Mr. Alberth, explains, the level of
`
`skill in the art already adopted by the Board in other proceedings (i.e., bachelor
`
`degree with two years of experience) is substantially correct:
`
`the wireless
`in
`the professionals working
`In 2004 many of
`communications space had only a couple years of experience after
`having graduated with an undergraduate degree
`in electrical
`engineering or a similar discipline. Mobile communications was a fast-
`growing field that necessarily attracted many newcomers to the field.
`Certainly it was uncommon for working professionals in the field to
`have doctorate degrees and such advanced education would be typical
`of someone with more than ordinary skill in the art.
`
`A POSITA in 2004 was typically involved in deploying and
`configuring wireless communication equipment to increase the reach of
`commercial wireless networks, increase their capacity to handle more
`users, and also allow for the deployment of new applications requiring
`more bandwidth. A POSITA would not have been required to design a
`wireless system from the ground up. This is because many important
`parameters and design choices had already been made by standards
`setting committees. Thus, a POSITA would have had enough
`
`
`
`3
`
`

`

`
`
`knowledge of the technology to understand and deploy equipment
`adhering to these technical specifications but would have a very limited
`ability to change the fundamental specifications of the network.
`
`Ex. 2010 [Alberth-2nd-Decl.] ¶¶ 22-23.
`
`Dr. Min’s improperly high level of ordinary skill in the art is detrimental to
`
`his opinions because he testified at deposition that this difference in skill level
`
`would “make a difference” in ways critical to nonobviousness. He testified that
`
`an artisan with only two years of experience would lack “critical thinking” and that
`
`the additional years beyond two years “make a difference” in the person’s ability to
`
`see the shortcomings in the prior art to make Petitioner’s combinations:
`
`Q. So am I understanding you correctly that a person with a bachelor
`degree but only two years of experience wouldn’t necessarily see
`the shortcomings in one system and try to improve it to combining
`with another system?
`
`A. I think we are talking still hypothetically, right. It all depends on a
`particular person. But I think in terms of the training cycle or the --
`yeah, training cycle both academically or in the industry, that’s
`right. I think that third year makes a difference.
`
`Ex. 2011 [Min-1st-Depo.] 83:18-84:7; see also id., 83:3-17 (explaining that two
`
`years of experience would lack “critical thinking”); 81:6-14.
`
`While the Petition fails regardless of which level of ordinary skill in the art
`
`is adopted by the Board, Petitioner has failed to meet its burden by also relying on
`
`
`
`4
`
`

`

`
`
`an overstated level of ordinary skill that, as testimony of Petitioner’s own expert
`
`shows, “make[s] a difference” for obviousness purposes.
`
`III. PETITIONER FAILS TO SHOW GROUND 1 RENDERS THE
`CLAIMS OBVIOUS (ALL CLAIMS).
`
`Ground 1 relies on a combination of Kim and Tong, and fails for at least two
`
`independently sufficient reasons. Pet., 6. First, Petitioner fails to show that Ground
`
`1 discloses “cell-specific pilots.” See Section III.A, infra. Second, Petitioner fails
`
`to show how and why a POSITA would have been motivated to modify its primary
`
`reference, Kim, to implement adaptive beam-forming as disclosed by Tong. See
`
`Section III.B, infra.
`
`A.
`
`Petitioner Fails To Show Ground 1 Discloses “Cell-Specific Pilots.”
`
`The Claims recite a transmitter 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 in Section III.A.2 below, Kim discloses
`
`that the same pilot(s) are transmitted from each cell, and only the pattern of which
`
`subcarriers are used to transmit those same pilot(s) is modified depending on the
`
`cell. As further discussed in Section III.A.1 below, Kim’s pilot patterns are precisely
`
`the prior art the Patent improved upon, and the Patent’s specification and claim
`
`
`
`5
`
`

`

`
`
`language both make clear that cell-specific pilot patterns, as opposed to cell-specific
`
`pilots, fail to disclose this limitation.
`
`1.
`
`“Cell-Specific Pilots” Require More Than The Prior Art Cell-
`Specific Pilot Patterns The Invention Improved Upon.
`
`The Patent is unambiguously clear that the claimed “cell-specific pilots” are
`
`not merely pilots that have a cell-specific pattern of placement; rather, it is the pilot
`
`symbols themselves that are cell-specific.
`
`The Patent explains that transmitting cell-specific pilot patterns—i.e., the
`
`pattern of placement of pilot symbols on the frequency subcarriers—was prior art
`
`that the invention improved. As the Patent teaches, cell-specific pilot patterns
`
`were a known method to address interference problems, but were not sufficient
`
`because this prior approach had “not provided for a careful and systematic
`
`consideration of the unique requirements of the pilot subcarriers”:
`
`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.
`
`
`
`6
`
`

`

`
`
`Petitioner’s expert similarly agreed at deposition that the portion of the Patent
`
`cited above conveys to a POSITA that the inventors believed that the prior art cell-
`
`specific pilot patterns were not sufficient, and that the invention desired to convey
`
`more by also conveying information through the pilot symbols themselves:
`
`Q. Do I understand correctly that in column 1, line 62, to column 2, line
`2, the patent is saying that one previous approach to data
`interference problem was that only the placement of pilots were
`changed but the patent says you also need to look at the actual
`value and the signal of the pilot symbols?
`
`A. Yeah. And I think that’s what is shown here.
`
`Ex. 2011 [Min-1st-Depo.] 88:8-16.
`
`Q. We discussed that the patent basically is saying since you’re already
`using the location patterns for the pilots, you might as well convey
`additional information since you’re already occupying that
`pattern?
`
`A. That’s correct.
`
`Ex. 2011 [Min-1st-Depo.] 124:5-10.
`
`The Patent’s embodiments then explain how information can be transmitted
`
`through the cell-specific pilot symbols themselves, instead of through their pattern
`
`of placement on the frequency subcarriers. The Patent explains that the cell-specific
`
`information is “carried” by the cell-specific pilot symbol, and not its pattern of
`
`placement:
`
`
`
`7
`
`

`

`
`
`If the ith subcarrier is used as a pilot subcarrier at the pth cell for the cell-
`specific purposes, the cell-specific information carried by ai,m(tk) and
`φi,m(tk) will be of interest to the receiver ….
`
`Ex. 1001 [’512 Patent] 5:16-19. Thus, the Patent makes clear that it is not the choice
`
`of the subcarrier (the ith subcarrier) that conveys the cell-specific information, but
`
`the parameters of the pilot symbol itself “carr[y]” the cell-specific information. Ex.
`
`2010 [Alberth-2nd-Decl.] ¶ 41. In fact, the Patent teaches that all cell-specific pilots
`
`may be placed on the same frequency subcarriers across all cells—making clear that
`
`it is not the mere pattern of placement that conveys the cell-specific information.
`
`Ex. 1001 [’512 Patent] 5:38-40 (“The cell-specific pilot subcarriers for different cells
`
`are not necessarily aligned in frequency.”).
`
`The Patent provides further, detailed discussions of how the cell-specific
`
`information is carried by the pilot symbols. 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:
`
`
`
`
`
`8
`
`

`

`
`
`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
`
`[’512 Patent] 5:1-15. As Patent Owner’s expert, Mr. Alberth, explains:
`
`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.
`
`Furthermore, this embodiment is clear that the “cell-specific pilots” are
`not cell-specific pilot patterns because the pilot signal being analyzed
`for cell-specific information, si(tk), is the signal on the specific
`subcarrier i. Ex. 1001 [’512 Pat.] 5:13-14 (“associated with the ith
`subcarrier from the base station of the mth cell.”). Had the Patent
`intended to analyze the pilot patterns, it would have needed to analyze
`the signal received on multiple subcarriers to identify a placement
`pattern of pilot symbols.
`
`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 the prior art cell-specific
`pilot patterns, which represent transmitting the same pilot symbol(s)
`
`
`
`9
`
`

`

`
`
`but only varying the placement pattern of which subcarriers are selected
`to transmit them.
`
`Ex. 2010 [Alberth-2nd-Decl.] ¶¶ 43-45; see also Ex. 2011 [Min-1st-Depo.] 113:8-17
`
`(Petitioner’s expert agreeing that cell specific information is always carried through
`
`cell specific pilot symbols in the Patent’s embodiments); id., 106:17-107:15
`
`(Petitioner’s expert explaining how the invention conveys the cell-specific
`
`information through the amplitude and/or phase of the cell-specific pilot symbols);
`
`id., 107:20-108:17 (Petitioner’s expert explaining the types of cell-specific
`
`information transmitted through pilot symbols).
`
`The Patent’s discussion of “cell-specific pilot subcarriers” further explicitly
`
`makes clear that “cell-specific” does not refer to merely changing the placement
`
`pattern of the same set of pilot symbols used by all cells. The Patent explains:
`
`FIG. 1 depicts a basic multi-carrier wireless communication system
`consisting of a transmitter 102 and a receiver 104. A functional block
`106 at the transmitter, called Pilot generation and insertion, generates
`pilot subcarriers and inserts them into predetermined frequency
`locations. These pilot subcarriers are used by the receiver to carry out
`certain functions. In aspects of this invention, pilot subcarriers are
`divided into two different groups according to their functionalities, and
`hence their distinct requirements.
`
`Ex. 1001 [’512 Patent] 3:4-12. As Mr. Alberth explains,
`
`
`
`10
`
`

`

`
`
`The portion of the Patent cited above explicitly confirms that the
`Patent’s use of “cell-specific” pilots does not mean merely the same
`pilots that have different patterns of placement in the frequency
`subcarriers. For example, the Patent explains that a functional block
`called “Pilot generation and insertion, generates pilot subcarriers.” Ex.
`1001 [’512 Patent] 3:4-12. The Patent then recites that it is the “pilot
`subcarriers,” not their placement pattern, that “are divided into two
`different groups.” Id., 3:10-12, 3:17-19, 3:25-27.
`
`Furthermore, a POSITA would understand that it is not the pattern of
`placement of the pilot symbols that is “cell-specific,” because the Patent
`explains that the pilot symbols, once generated, are placed at
`“predetermined frequency locations.” Id., 3:6-8. The Patent does not
`subsequently explain that the frequency locations or pattern of
`placement of the pilot symbols in those “predetermined frequency
`locations” is cell-specific, but that the pilots generated by functional
`block 106 are cell-specific. Id., 3:6-12.
`
`I also note that while the Patent uses the term “pilot subcarriers” in the
`portion of the Patent quoted above (Ex. 1001 [’512 Patent] 3:4-12), a
`POSITA would readily understand that “pilot subcarriers” are used in
`this portion to mean “pilot symbols.” This is readily verifiable when
`the Patent explains that the functional block 106 “called Pilot
`generation and insertion, generates pilot subcarriers and inserts them
`into predetermined frequency locations.” Ex. 1001 [’512 Patent] 3:6-
`8. A POSITA would ready understand that it is only pilot symbols that
`can be “generated” and then placed into “predetermined frequency
`locations.” In any event, regardless of how the specific phrase “pilot
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`subcarriers” is used by the Patent in this section, it does not change the
`POSITA’s understanding that cell-specific pilots does not merely refer
`to the same set of pilots that have cell-specific placement patterns.
`
`Ex. 2010 [Alberth-2nd-Decl.] ¶¶ 47-49; accord Ex. 2011 [Min-1st-Depo.] 98:5-9
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`(“Q. So is it fair to say that when the patent talks in column 3, line 7, generating
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`pilot subcarriers, it really means generating pilot symbols? A. Yeah.”).
`
`This clear teaching of the Patent’s specification—that cell-specific pilot
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`patterns is prior art that the invention improves upon—is also reflected in the claims’
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`plain meaning, which make clear that it is the pilot symbols themselves that are “cell-
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`specific,” not which subcarrier they are placed upon (i.e., their placement pattern).
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`Claim 1 recites a transmitter that is configured to “insert first pilots of a first type
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`onto a plurality of subcarriers,” and further recites that “the first pilots are cell-
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`specific pilots”:
`
`
`
`Both experts agree that the claims’ recitation of “insert[ing] first pilots” refers
`
`to inserting “first pilot symbols.” Ex. 2011 [Min-1st-Depo.] 119:7-10; Ex. 2010
`
`[Alberth-2nd-Decl.] ¶ 51. Furthermore, it is a basic principle of claim construction
`
`that “[s]ubsequent use of the definite articles ‘the’ or ‘said’ in a claim refers back to
`
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`the same term recited earlier in the claim.” Wi-LAN, Inc. v. Apple Inc., 811 F.3d
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`455, 462 (Fed. Cir. 2016) (“The term ‘the modulated data symbols’ therefore refers
`
`back to the randomized data symbols produced by the computing means in the
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`second claim element.”) (emphasis in original). As Mr. Alberth explains:
`
`Thus, 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, or the subcarriers upon
`which the pilots are placed, are 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. 2010 [Alberth-2nd-Decl.] ¶ 52.
`
`The Institution Decision preliminarily interpreted “cell-specific pilots” to
`
`encompass the same set of pilots used by all cells, but that only have a cell-specific
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`pattern of placement on the frequency subcarriers. Paper 7, 24-25. Patent Owner
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`respectfully disagrees for the reasons explained above, and further noted below.
`
`The I.D. preliminarily stated that “[o]n the present record,” the Patent’s discussion
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`of prior art relating to each cell transmitting “a particular pattern of pilot
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`subcarriers” “does not appear to exclude ‘transmit[ing] a particular pattern of pilot
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`subcarriers.’” Paper 7, 25 (discussing Ex. 1001 [’512 Patent] 1:62-2:2). The I.D.
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`also provisionally stated that other portions of the Patent cited by Patent Owner do
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`“not clearly exclude ‘transmit[ing] a particular pattern of pilot subcarriers.’” Paper
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`7, 25. However, as the present Response and supporting evidence shows, both
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`these exclusions should in fact be found.
`
`For the reasons the Federal Circuit has explained in, for example, In re
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`Abbott Diabetes Care Inc., 696 F.3d 1142 (Fed. Cir. 2012), the plain meaning of
`
`the claim, as well as the Patent’s specification, support Patent Owner’s
`
`construction. In Abbott, the Office erroneously held that “electrochemical sensor,”
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`based on its plain meaning, did not exclude wires connections. Id., 1146. The
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`Federal Circuit reversed, even under the “broadest-reasonable-interpretation”
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`standard. The Court first observed that Abbott’s claims “suggest[ed]” connectivity
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`without cables because they did not recite cables. Id., 1149. The Court then held:
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`Even more to the point, every embodiment disclosed in the
`specification shows an electrochemical sensor without external cables
`or wires. Indeed, the only mention of a sensor with external cables or
`wires in Abbott’ s patents is a single statement addressing the primary
`deficiency of the prior art. It is true that the specification does not
`contain an explicit statement disclaiming electrochemical sensors with
`external cables or wires. …. We have held that “[e]ven when guidance
`is not provided in explicit definitional format, the specification may
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`define claim terms by implication such that the meaning may be found
`in or ascertained by a reading of the patent documents.” Irdeto Access,
`Inc. v. Echostar Satellite Corp., 383 F.3d 1295, 1300 (Fed. Cir.
`2004) (internal quotation marks omitted). Here, Abbott’s patents
`“repeatedly, consistently, and exclusively” depict an electrochemical
`sensor without external cables or wires while simultaneously
`disparagi