UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`VOLKSWAGEN GROUP OF AMERICA, INC.,
`FORD MOTOR COMPANY, GENERAL MOTORS LLC,
`NISSAN NORTH AMERICA, INC., TESLA, INC., and
`AMERICAN HONDA MOTOR CO., INC.,1
`Petitioner
`
`v.
`
`NEO WIRELESS, LLC,
`Patent Owner
`____________________
`
`Case IPR2022-01539
`U.S. Patent No. 10,965,512
`____________________
`
`DECLARATION OF DR. PAUL MIN IN SUPPORT OF PETITIONER’S
`REPLY
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`1 Ford Motor Company filed a motion for joinder and a petition in IPR2023-00764,
`and General Motors LLC, Nissan North America, Inc., Tesla, Inc., and American
`Honda Motor Co., Inc., filed their own motion for joinder and petition in IPR2023-
`00961. Both motions were granted, and, therefore, Ford Motor Company, General
`Motors LLC, Nissan North America, Inc., Tesla, Inc., and American Honda Motor
`Co., Inc., have been joined as petitioners in this proceeding.
`
`VWGoA EX1044
`VWGoA V. Neo Wireless
`IPR2022-01539
`
`

`

`
`
`I.
`
`II.
`
`
`
`Case IPR2022-01539
`U.S. Patent No. 10,965,512
`
`TABLE OF CONTENTS
`
`INTRODUCTION ....................................................................................... 1
`
`LEVEL OF ORDINARY SKILL IN THE ART .......................................... 2
`
`III. LEGAL STANDARDS ............................................................................... 5
`
`IV. MR. ALBERTH RELIES ON AN IMPROPERLY NARROW
`CONSTRUCTION OF CELL-SPECIFIC PILOTS ...................................... 5
`
`A.
`
`The plain and ordinary meaning of cell-specific pilots is pilots that are
`specific to a cell ................................................................................. 6
`
`B.
`
`Neo’s proposed construction is improper ........................................... 9
`
`1.
`
`2.
`
`3.
`
`Neo’s construction departs from the plain and ordinary meaning
`................................................................................................. 9
`
`Other claims from the ’512 patent family show that Neo’s
`construction is too narrow .......................................................11
`
`Neo’s proposed construction is inconsistent with the
`specification ............................................................................13
`
`4. Mr. Alberth’s reliance on the ’512 patent’s Background is
`misplaced ................................................................................14
`
`V. KIM DISCLOSES CELL-SPECIFIC PILOTS UNDER THE CORRECT
`CONSTRUCTION AND NEO’S CONSTRUCTION .................................17
`
`A. Kim discloses cell-specific pilots under the term’s plain and ordinary
`meaning. ...........................................................................................17
`
`B.
`
`Kim discloses cell-specific pilots even under Neo’s improperly
`narrow construction ..........................................................................18
`
`1.
`
`Kim’s cell-specific pilots have different values for different
`cells ........................................................................................18
`
`2.
`
`Neo’s reliance on Kim’s Figure 14 is misplaced .....................29
`
`VI. KIM-TONG TEACHES BEAMFORMING ...............................................31
`
`A. Mr. Alberth analyzes Kim in isolation, and ignores the combined
`system’s channel estimation teachings ..............................................31
`
`B.
`
`C.
`
`Kim’s pilots are transmitted after a channel has been established .....35
`
`A POSA would have understood that beamforming provides benefits
`without knowledge of channel conditions .........................................39
`
`VII. KETCHUM’S BEACON PILOTS ARE CELL-SPECIFIC PILOTS ..........42
`
`
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`

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`Case IPR2022-01539
`U.S. Pat. No. 10,965,512
`
`VIII. A POSA WOULD HAVE FOUND IT OBVIOUS TO IMPLEMENT LI’S
`CELL-SPECIFIC PILOTS IN KETCHUM ................................................50
`
`IX. KETCHUM TRANSMITS THE FIRST AND SECOND PLURALITY OF
`SUBCARRIERS IN AT LEAST ONE OF THE TIME SLOTS ..................52
`
`X. DEPENDENT CLAIMS .............................................................................57
`
`XI. CONCLUSION ..........................................................................................59
`
`
`
`
`
`
`
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`

`Case IPR2022-01539
`U.S. Pat. No. 10,965,512
`
`Exhibit
`No.
`
`1001
`
`1002
`
`1003
`
`1004
`
`PETITIONER’S UPDATED EXHIBIT LIST
`
`Description
`
`U.S. Patent No. 10,965,512 to Li et al. (“’512 patent”)
`
`’512 Patent Prosecution History
`
`Declaration of Dr. Paul Min
`
`International Patent Publication No. WO2004/049618 to Kim et al.
`(“Kim”)
`
`1005
`
`U.S. Patent No. 7,120,395 to Tong et al. (“Tong”)
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`U.S. Patent Application Pub. No. 2004/0179627 to Ketchum et al.
`(“Ketchum”)
`
`U.S. Patent Application Pub. No. 2002/0163879 to Li et al. (“Li”)
`
`U.S. Patent No. 7,248,559 to Ma et al. (“Ma ’559”)
`
`Tufvesson, et al., Pilot Assisted Channel Estimation For OFDM in
`Mobile Cellular Systems, IEEE 47th Vehicular Technology
`Conference (1997)
`
`U.S. Patent No. 7,826,471 to Wilson et al. (“Wilson”)
`
`U.S. Patent No. 7,664,533 to Logothetis et al. (“Logothetis”)
`
`U.S. Patent No. 7,054,664 to Nagaraj (“Nagaraj”)
`
`International Patent Application No. WO 2004/056022 to Lee et al.
`(“Lee”)
`
`1014
`
`U.S. Patent No. 7,551,546 to Ma (“Ma ’546”)
`
`1015
`
`Anderson, Fixed Broadband Wireless System Design, Wiley (2003)
`(excerpts)
`
`1016
`
`U.S. Patent No. 7,852,746 to Jalali (“Jalali”).
`
`1017
`
`U.S. Patent Application Pub. No. 2004/0131007 to Smee et al.
`(“Smee”)
`
`1018
`
`U.S. Patent No. 7,650,152 to Li et al. (“Li ’152”).
`
`1019
`
`U.S. Patent Application Pub. No. 2004/0190598 to Seki et al.
`(“Seki”).
`
`
`
`- iv -
`
`

`

`Case IPR2022-01539
`U.S. Pat. No. 10,965,512
`
`Description
`
`Li, “A Novel Broadband Wireless OFDMA Scheme for Downlink in
`Cellular Communications,” Samsung Advanced Institute of
`Technology (IEEE) (2003) (“Li-Samsung”)
`Hara et al., “Multicarrier Techniques for 4G Mobile
`Communications,” Artech House (2003) (excerpts) (“Hara”)
`U.S. Patent Application Pub. No. 2004/0228270 to Chen et al.
`(“Chen”)
`
`Van Nee et al., “OFDM for Wireless Multimedia Communications,”
`Artech House (2000) (“Van Nee”) (excerpts)
`Bahai et al., “Multi-Carrier Communications Theory and
`Applications of OFDM,” Springer Science (2004) (excerpts)
`(“Bahai”)
`
`U.S. Patent No. 7,039,001 to Krishnan et al. (Krishnan”)
`
`U.S. Patent No. 6,992,621 to Casas et al. (“Casas”)
`
`U.S. Patent No. 5,596,329 to Searle et al. (“Searle”)
`
`U.S. Patent Application Pub. No. 2005/0075125 to Bada et al.
`(“Bada”).
`
`Exhibit
`No.
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`1029
`
`Curriculum Vitae of Dr. Paul Min
`
`1030
`
`U.S. Provisional Patent Application No. 60/421,309 to Walton et al.
`(“’309 Provisional”)
`
`1031
`
`U.S. Patent No. 7,012,882 to Wang et al. (“Wang”)
`
`1032
`
`1033
`
`1034
`
`1035
`
`1036
`
`1037
`
`Transfer Order, In re: Neo Wireless, LLC, Patent Litigation, Case
`MDL No. 3034, issued June 14, 2022 (ECF No. 50)
`Docket Sheet, Neo Wireless, LLC v. Volkswagen Group of America,
`Inc., Case No. 2:22-cv-11404 (E.D. Mich.)
`United States District Courts – National Judicial Caseload Profile,
`June 2022
`
`U.S. Patent No. 8,934,473 to Li et al.
`
`U.S. Patent No. 8,432,891 to Li et al.
`
`U.S. Patent No. 11,388,034 to Li et al.
`
`
`
`- v -
`
`

`

`Case IPR2022-01539
`U.S. Pat. No. 10,965,512
`
`Description
`
`Kim et al., “Synchronization and Cell-Search Technique Using
`Preamble for OFDM Cellular Systems,” IEEE Transactions on
`Vehicular Technology, Vo. 56, No. 6, November 2007
`Kim et al., “A Preamble-Based Cell Searching Technique
`for OFDM Cellular Systems,” IEEE, 2003
`
`Exhibit
`No.
`
`1038
`
`1039
`
`1040
`
`U.S. Patent No. 9,749,168 to Li et al.
`
`1041
`
`Declaration of William Alberth in Support of Neo Wireless’s
`Opening Claim Construction Brief, In re Neo Wireless, LLC Patent
`Litigation, Case No. 2:22-md-03034-TGB (E.D. Mich.), filed
`February 16, 2023
`
`1042
`
`Transcript of October 30, 2023 Deposition of William P. Alberth Jr.
`
`1043
`
`Ifeachor et al., Digital Signal Processing: A Practical Approach,
`Second Edition, Prentice Hall, 2002 (excerpts)
`
`1044
`
`Declaration of Dr. Paul Min in Support of Petitioner’s Reply
`
`1045
`
`Transcript of October 19, 2023 Deposition of William P. Alberth, Jr.
`in IPR2022-01537
`
`
`
`- vi -
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`

`

`
`
`
`
`Case IPR2022-01539
`U.S. Patent No. 10,965,512
`
`I, Dr. Paul Min, hereby declare as follows.
`
`I.
`
`INTRODUCTION
`
`1.
`
`I have been asked by Volkswagen Group of America, Inc.
`
`(“VWGoA” or “Petitioner”) to provide my opinions in the above-captioned inter
`
`partes review (“IPR”) proceeding involving U.S. Patent No. 10,965,512 (“the ’512
`
`patent,” EX1001). I previously submitted a declaration (EX1003) in support of the
`
`Petition for inter partes review of the ’512 patent. This declaration is in support of
`
`Petitioner’s Reply to Patent Owner’s Response in the same proceeding, IPR2022-
`
`01539.
`
`2.
`
`I understand that Patent Owner Neo Wireless, LLC (“Patent Owner”
`
`or “Neo”) submitted a Patent Owner Response (“POR,” Paper 20) along with a
`
`second declaration from William P. Alberth Jr. (EX2010) in support of the POR.
`
`3. My background and qualifications were provided in my original
`
`declaration, Exhibit 1003, and my CV was submitted as Exhibit 1029. My
`
`statements and opinions in my original declaration regarding my review of the
`
`’512 patent and related materials remain unchanged. In reaching my opinions in
`
`this declaration, I reviewed the POR, Mr. Alberth’s second declaration (EX2010),
`
`my original declaration, the materials reviewed as part of my original declaration,
`
`the exhibits listed in the above exhibit list, and any materials cited herein.
`
`
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`Case IPR2022-01539
`U.S. Pat. No. 10,965,512
`
`4.
`
`I confirm that to the best of my knowledge the accompanying exhibits
`
`are true and accurate copies of what they purport to be, and that an expert in the
`
`field would reasonably rely on them to formulate opinions such as those set forth
`
`in this declaration.
`
`II. LEVEL OF ORDINARY SKILL IN THE ART
`
`5.
`
`I incorporate by reference my opinion of the person of ordinary skill
`
`in the art (“POSA”) as set forth in paragraph 65 of my previous declaration
`
`(EX1003). I understand that, although Mr. Alberth adopted this level of ordinary
`
`skill in his first declaration, he changed his opinion and adopted a different level of
`
`ordinary skill in his second declaration. EX2001, ¶17; EX2010, ¶¶17-25.
`
`6.
`
`I stand by my opinion on the level of ordinary skill in the art. The
`
`subject matter of the ’512 patent is complex—OFDMA-compatible wireless
`
`systems. More specifically, the ’512 patent seeks to provide “a careful and
`
`systematic consideration of the unique requirements of the pilot subcarriers” in
`
`such systems. EX1001, 1:65-2:2. The Background of the ’512 patent states that
`
`“carrying out [] pilot-dependent functions” in such systems was a “challenging
`
`task in that, in addition to the degradation due to multipath propagation channels,
`
`signals originated from the base stations at different cells interfere with each
`
`other.” EX1001, 1:54-61. Thus, the ’512 patent discloses certain design criteria for
`
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`

`Case IPR2022-01539
`U.S. Pat. No. 10,965,512
`
`pilot signals within a wireless system to solve challenging tasks within wireless
`
`communication systems.
`
`7.
`
`It is my opinion that Mr. Alberth’s proposed level of ordinary skill
`
`does not properly account for the complex subject matter of the ’512 patent. Mr.
`
`Alberth asserts that POSAs in 2004 would merely be involved in “deploying and
`
`configuring wireless communication equipment.” EX2010, ¶23. But as just
`
`explained, the ’512 patent discloses certain design techniques for pilot signals to
`
`provide “a careful and systematic consideration of the unique requirements of the
`
`pilot subcarriers” in such systems. EX1001, 1:65-2:2. This subject matter extends
`
`beyond deploying and configuring equipment into the design of aspects of a
`
`wireless system. Thus, it is my opinion that Mr. Alberth’s proposed level of
`
`ordinary skill is incorrect.
`
`8.
`
`Regardless, my opinions regarding the obviousness of the challenged
`
`claims would not change even if the Board adopted Mr. Alberth’s proposed level
`
`of ordinary skill. That is, it is my opinion that the challenged claims would have
`
`been obvious as of the alleged invention of the ’512 patent to someone with a
`
`“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,” as proposed by Mr.
`
`Alberth. EX2010, ¶21.
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`Case IPR2022-01539
`U.S. Pat. No. 10,965,512
`
`9.
`
`I understand that in another proceeding for a patent directed to similar
`
`subject matter, Mr. Alberth agreed that the low end of my level of ordinary skill
`
`(B.S. with 3 years’ experience) is “very close” to his own proposal (B.S. with two
`
`years’ experience), and that the different experience levels would “not make that
`
`much of a big [] difference.” EX1045, 44:9-11 (“Her low end of a bachelor’s plus
`
`three years is very close to my bachelor’s plus two years. That’s pretty close.”),
`
`78:9-12; EX2010, ¶21. Additionally, Mr. Alberth admitted that this small
`
`difference would not lead to any materially different conclusions. EX1045, 78:9-
`
`79:3 (“it’s a reasonable assumption that a person with two or three years would
`
`come to the same conclusions”); EX2010, ¶25. Mr. Alberth confirmed that his
`
`opinion regarding the level of ordinary skill in the art in this other proceeding
`
`applied equally to this proceeding. EX1045, 33:13-34:5. Thus, Mr. Alberth
`
`acknowledges that his level of ordinary skill substantially aligns with his own. I
`
`also note that Mr. Alberth does not cite a single instance relating to the
`
`obviousness of the challenged claims where my testimony is at odds with his own
`
`proposed level of ordinary skill. Although Neo generally alleges that the extra year
`
`of experience between my proposal and Mr. Alberth’s proposal “would make a
`
`difference” (POR, 4), neither Neo nor Mr. Alberth has identified any specific
`
`instance in the asserted obviousness grounds where the different experience levels
`
`would make a difference.
`
`- 4 -
`
`

`

`10. Thus, I stand by my opinions in my first declaration and this
`
`declaration regardless of whether the Board adopts my level of ordinary skill or
`
`Case IPR2022-01539
`U.S. Pat. No. 10,965,512
`
`Mr. Alberth’s.
`
`III. LEGAL STANDARDS
`
`11.
`
`I incorporate by reference my understanding of the legal principles,
`
`including my discussion of claim construction, obviousness, and the level of
`
`ordinary skill in the art as set forth in my previous declaration. EX1003, ¶¶23-40.
`
`IV. MR. ALBERTH RELIES ON AN IMPROPERLY NARROW
`CONSTRUCTION OF CELL-SPECIFIC PILOTS
`
`12.
`
`I understand that Mr. Alberth asserts that the plain and ordinary
`
`meaning of the term “cell-specific pilot” is a pilot that has a cell-specific amplitude
`
`and/or phase carrying cell-specific information. EX2010, ¶45. I disagree with Mr.
`
`Alberth for the reasons provided below. Specifically, it is my opinion that the plain
`
`and ordinary meaning of the term “cell-specific pilot” is a pilot that is specific to a
`
`cell. It is my opinion that this construction is supported by the language of the
`
`claims and the specification. It is also supported by the language of the claims of
`
`other patents in the ’512 patent’s family that share a specification with the ’512
`
`patent, which I understand from counsel can be used to help inform the proper
`
`interpretation of claim terms in the ’512 patent.
`
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`Case IPR2022-01539
`U.S. Pat. No. 10,965,512
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`A. The plain and ordinary meaning of cell-specific pilots is pilots that
`are specific to a cell
`
`13. The plain and ordinary meaning of the term “cell-specific pilot” is
`
`straightforward—“a pilot that is specific to a cell.” The specification provides
`
`guidance as to what makes a pilot cell-specific. For instance, the specification
`
`describes these pilots in terms of functionality, stating that its “pilot subcarriers are
`
`divided into two different groups according to their functionalities.” EX1001,
`
`3:10-12 (emphasis added). The specification further states that the first group—
`
`cell-specific pilots—“will be used by the receiver [] to extract information unique
`
`to each individual cell.” EX1001, 3:17-19, see also Abstract (“design criteria and
`
`transmission formats of the cell-specific and common pilot subcarriers are
`
`specified to enable a receiver to perform different system functions” (emphasis
`
`added)).
`
`14. As an example of such functionality, the ’512 patent teaches that
`
`“cell-specific pilot subcarriers can be used in channel estimation where it is
`
`necessary for a particular receiver to be able to differentiate the pilot subcarriers
`
`that are intended for its use from those of other cells.” EX1001, 3:19-23. This
`
`example describes a case where the receiver determines cell-specific information in
`
`the form of a channel estimate based on the received pilot. I understand that Mr.
`
`Alberth characterizes this example in the same way. EX1042, 50:13-51:4, 94:4-
`
`95:12. In this example scenario, the receiver uses the cell-specific pilot to obtain
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`Case IPR2022-01539
`U.S. Pat. No. 10,965,512
`
`cell-specific information (channel estimate), but this cell-specific information is
`
`not carried by the cell-specific pilot. EX1042, 94:4-95:12 (“The channel is not
`
`encoded on the cell-specific pilot”). The receiver obtains the cell-specific
`
`information using the pilot, by comparing the received pilot to a known value of
`
`the pilot to determine how the transmitted pilot was affected by the channel
`
`between the base station and the receiver. Thus, the ’512 patent explains that pilots
`
`are cell-specific, for instance, when used to perform cell-specific functions.
`
`15. The ’512 patent also provides an example embodiment where a cell-
`
`specific pilot is generated using cell-specific information. For instance, in one
`
`example, the specification states that such cell-specific information can be “carried
`
`by [the amplitude and phase]” of a pilot used for cell-specific purposes. EX1001,
`
`5:16-22. The specification also explains that cell-specific pilots can have certain
`
`“attributes… such as their frequency indices and complex values specified by their
`
`requirements.” EX1001, 6:52-59 (emphasis added). For instance, the ’512 patent
`
`teaches varying the frequency (subcarrier) positions of the cell-specific pilots of
`
`different cells. EX1001, FIGs. 5-6, 5:38-40, 5:26-32. Specifically, the ’512 patent
`
`teaches that “cell-specific pilot subcarriers for different cells are not necessarily
`
`aligned in frequency.” EX1001, 5:38-40, claim 5. This is shown by Figure 5 of the
`
`’512 patent, which depicts different placement patterns of cell-specific pilot
`
`subcarriers for “Cell p” and “Cell q.”
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`Case IPR2022-01539
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`16. Thus, the ’512 patent teaches that a pilot can be cell-specific based on
`
`its cell-specific attributes, such as its frequency or subcarrier position, or its
`
`complex values (amplitude and phase). See EX1035, claim 1 (“the cell-specific
`
`pilot subcarriers possess amplitudes, phases, and frequency subcarrier indices
`
`specific to the cell”). These attributes enable a “receiver to… differentiate the pilot
`
`subcarriers that are intended for its use from those of other cells.” EX1001, 3:19-
`
`24; EX1035, claim 5 (“wherein the specific amplitudes, phases, and frequency
`
`subcarrier indices of the cell-specific pilot subcarriers enable a mobile station in
`
`the cell to differentiate the cell-specific pilot subcarriers from pilot subcarriers
`
`transmitted by base stations in other cells”). For instance, the receiver is able to
`
`determine which cell the pilot belongs to based on its subcarrier position. EX1042,
`
`72:3-73:9.
`
`17.
`
`In my opinion, these examples provide guidance as to what makes a
`
`pilot specific to a cell, in accordance with the term’s plain and ordinary meaning.
`
`A POSA reading the ’512 patent would have understood a pilot to be cell-specific,
`
`for instance, when it is used for cell-specific functionality and/or when it is
`
`generated using cell-specific attributes, such as its frequency indices or its complex
`
`values. That is, the ’512 patent provides examples of cell-specific pilots in terms of
`
`their functionality as well as their attributes (amplitude, phase, frequency indices).
`
`A POSA would have understood that the claimed cell-specific pilots encompass
`
`- 8 -
`
`

`

`these examples. That is, it is my opinion that these examples would have informed
`
`a POSA as to the types of circumstances in which a pilot would be considered
`
`Case IPR2022-01539
`U.S. Pat. No. 10,965,512
`
`specific to a cell.
`
`18. The plain and ordinary meaning of the term is also consistent with the
`
`language of the claims themselves. The independent claims broadly recite “cell-
`
`specific pilots,” without requiring particular structural features of the cell-specific
`
`pilots. Further, independent claim 15 describes cell-specific pilots in terms of their
`
`functionality, reciting that they are used by the receiver to “recover cell-specific
`
`information.” EX1001, claim 15. Claim 7 also describes these pilots in terms of
`
`their functionality, reciting that “the cell-specific pilots are used to convey cell-
`
`specific information.” EX1001, claim 7. Thus, the Board should construe cell-
`
`specific pilots in accordance with its plain and ordinary meaning—“pilots that are
`
`specific to a cell.”
`
`B. Neo’s proposed construction is improper
`
`1.
`
`Neo’s construction departs from the plain and ordinary
`meaning
`
`19. Neo asserts that a cell-specific pilot must “have cell-specific
`
`amplitudes and/or phases carrying cell-specific information.” POR, 11 (citing
`
`EX2001, ¶36). As I explained above, Mr. Alberth asserts that this is the plain and
`
`ordinary meaning of the term in view of the specification. EX1042, 82:9-14. But as
`
`I also explained above, the plain and ordinary meaning is not so limiting.
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`Case IPR2022-01539
`U.S. Pat. No. 10,965,512
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`20. The claims do not explicitly characterize cell-specific pilots by their
`
`amplitudes or phases. Mr. Alberth nevertheless argues that the specification
`
`mandates Neo’s proposed construction. But the specification spends a total of one
`
`sentence on the amplitudes and phases of cell-specific pilots, referring to “cell-
`
`specific information carried by [the amplitude and phase]” as an example cell-
`
`specific pilot. EX1001, 5:16-22. The specification does not provide any examples
`
`of cell-specific information carried by the amplitude and phase, or any concrete
`
`examples of how such information (carried by the amplitude and phase) would be
`
`used or processed.
`
`21. Rather, as I explained above, the specification describes cell-specific
`
`pilot functionality generally, independent of the amplitude or phase of the pilot
`
`signal. E.g., EX1001, Abstract (“the cell-specific and common pilot subcarriers are
`
`specified to enable a receiver to perform different system functions”), 3:19-23
`
`(“cell-specific pilot subcarriers can be used in channel estimation”), 7:67-8:3
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`(“common pilot sub-carriers can be used along with the cell-specific subcarriers to
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`determine the cell-specific information in some scenarios”). It is my opinion that
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`the construction of cell-specific pilots should not be limited based on this single
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`sentence because, as explained above, the specification also describes these pilots
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`in terms of their functionalities and their frequencies (subcarrier positions).
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`Case IPR2022-01539
`U.S. Pat. No. 10,965,512
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`22. Further, the specification explicitly states that it is the “pilot
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`subcarriers” that “are divided into two different groups according to their
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`functionalities.” Mr. Alberth acknowledged that a pilot subcarrier is a “subcarrier
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`that’s carrying a pilot.” EX1042, 45:15-21. Thus, according to Mr. Alberth’s own
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`analysis, the specification states that it is the frequency (subcarrier) positions and
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`functionality by which the specification characterizes the cell-specific pilots.
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`23. Thus, it is my opinion that Neo and Mr. Alberth’s proposed
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`construction is incorrect because it deviates from the plain and ordinary meaning
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`of the term. Neo and Mr. Alberth’s attempt to limit the construction to require
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`certain amplitude phase and/or phase values is contrary to the plain language of the
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`claims and the specification. A POSA reading the ’512 patent would not have
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`understood the claimed cell-specific pilots to require cell-specific amplitudes
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`and/or phases.
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`2. Other claims from the ’512 patent family show that Neo’s
`construction is too narrow
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`24.
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`I understand that the Institution Decision stated that dependent claim 4
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`of the ’512 patent indicates that the cell-specific pilot “as recited by claim 1,
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`encompasses more than a ‘cell-specific pilot . . . [that] is unique to a respective
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`cell.’” ID, 24-25. I do not see a response to this observation from Neo or Mr.
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`Alberth. But I agree with the Board’s determination. Neo’s construction requires
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`each cell-specific pilot to be unique to a respective cell by requiring each cell-
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`Case IPR2022-01539
`U.S. Pat. No. 10,965,512
`
`specific pilot to have a cell-specific amplitude and/or phase. It is my opinion that a
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`POSA would have understood from claim 4 that the cell-specific pilots recited in
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`claim 1 do not necessarily have to be unique to a respective cell. That is, as the
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`Board noted, the cell-specific pilots in claim 1 encompass more than this. I thus
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`agree for this additional reason that Neo’s proposed construction is incorrect. That
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`is, a POSA would have understood from claim 4 that the cell-specific pilots in
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`claim 1 should not be construed to require cell-specific (unique) amplitudes and/or
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`phases.
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`25. Other claims in the ’512 patent family make this crystal clear.
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`Independent claim 1 of U.S. Patent No. 8,934,473 recites that “cell-specific pilot
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`subcarriers possess amplitudes, phases, and frequency subcarrier indices specific
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`to the cell.” EX1035, claim 1 (emphasis added). Claims 1 and 2 of U.S. Patent No.
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`8,432,891 recite that “the cell-specific pilot subcarriers possess characteristics
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`specific to the cell,” and that these “characteristics specific to the cell” include
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`“phases and amplitudes of the cell-specific pilot subcarriers.” EX1036, claims 1-2
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`(emphasis added). Independent claim 1 of U.S. Patent No. 11,388,034 similarly
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`recites that “the cell-specific pilots corresponding to the cell are different than
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`second cell-specific pilots corresponding to a second cell.” EX1037, claim 1.
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`26. These claims plainly show that the cell-specific pilots recited in the
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`independent claims of the ’512 patent encompass more than pilots with amplitudes
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`Case IPR2022-01539
`U.S. Pat. No. 10,965,512
`
`and/or phases specific to the cell. That is, from these claims, a POSA would have
`
`understood that cell-specific pilots could possess cell-specific amplitudes and
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`phases, but that the definition of the term does not require this. Further, these
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`claims show that a pilot’s particular frequency index (subcarrier position) could be
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`an attribute that makes a pilot cell-specific.
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`27. Thus, consistent with the Board’s finding in the Institution Decision,
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`these other patents in the ’512 patent family further show that the claimed cell-
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`specific pilots of the ’512 patent encompass more than cell-specific amplitudes and
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`phases. In my opinion, a POSA would have understood that if Neo had intended to
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`claim a specific amplitude and phase of the cell-specific pilots in the ’512 patent, it
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`would have, just as it did in these other patents.
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`3.
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`Neo’s proposed construction is inconsistent with the
`specification
`
`28. As I explained above, Neo’s proposed construction relies on the
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`specification’s single disclosure of “cell-specific information carried by” both the
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`amplitude and phase of an example cell-specific pilot. EX1001, 5:16-22. Neo’s
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`proposed construction is inconsistent with this disclosure because its construction
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`only requires “cell-specific amplitude and/or phases.” POR., 9. That is, Neo’s
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`construction departs from the specification by encompassing pilots with cell-
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`specific amplitude, but not cell-specific phases (and vice-versa).
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`Case IPR2022-01539
`U.S. Pat. No. 10,965,512
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`29. Although Mr. Alberth alleged that a POSA would have understood
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`this passage of the specification to merely require cell-specific amplitudes or
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`phases, he could not point to any portion of the ’512 patent that supports his
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`assertion. EX1042, 82:15-86:3. I do not see any teaching in the ’512 patent that
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`would support this. Mr. Alberth’s opinion appears to be based on his opinion that a
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`POSA would have known how to modulate the amplitude or the phase. EX1042,
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`82:15-86:3. But the specification itself does not teach encoding cell-specific
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`information in the amplitude or phase. It only teaches encoding this information in
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`the amplitude and phase. EX1001, 5:16-24.
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`30.
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` Thus, it is my opinion that Neo’s proposed construction is
`
`inconsistent with the specification.
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`4. Mr. Alberth’s reliance on the ’512 patent’s Background is
`misplaced
`
`31. Mr. Alberth and Neo appear to argue that the ’512 patent’s
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`Background supports its construction by excluding cell-specific pilot patterns from
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`the claims. But this argument mischaracterizes the Background.
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`32. Neo appears to argue that the claimed cell-specific pilots should
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`exclude pilot patterns because the Background teaches that such patterns “are
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`precisely the prior art the Patent improved upon.” POR, 5, see also EX2010, ¶39.
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`Neo’s argument thus appears to be that the ’512 patent improved upon cell-specific
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`Case IPR2022-01539
`U.S. Pat. No. 10,965,512
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`pilot patterns by replacing them with the claimed cell-specific pilots, and that
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`because of this, the patentee disavowed pilot patterns from the claims.
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`33. At the outset, even if Neo had characterized the Background correctly,
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`I do not see any reason why this would necessitate construing cell-specific pilots in
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`terms of their amplitudes and phases because, as I explained above, the ’512 patent
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`also describes these pilots in terms of their cell-specific functions and frequency
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`indices.
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`34. Regardless, Neo’s argument is wrong because cell-specific pilots were
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`known prior to the ’512 patent. Mr. Alberth admitted that the very pilots described
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`in the Background could have been cell-specific pilots. EX1042, 53:6-55:7; 66:16-
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`67:11. Further, the claimed embodiments of the ’512 patent also teach varying
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`placement patterns of the cell-specific pilots among different cells—the very same
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`approach discussed in the Background. EX1001, 5:38-39 (“cell-specific pilot
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`subcarriers for different cells are not necessarily aligned in frequency”), see also
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`5:26-32, claim 5. Mr. Alberth admitted that he “hadn’t analyzed” whether the
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`patterns discussed in the Background were the same as the patterns shown in
`
`Figure 5, and that he “[hadn’t] torn apart the Background.” EX1042, 62:3-64:21.
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`Mr. Alberth also acknowledged that the ’512 patent’s technique reduces
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`interference among the cell-specific pilots, consistent with the Background’s
`
`approach.
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`Case IPR2022-01539
`U.S. Pat. No. 10,965,512
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`35. Thus, to the extent the ’512 patent provides an improvement over the
`
`art, it was not to replace cell-specific pilot patterns with cell-specific pilots. Rather,
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`the ’512 patent is clear that the alleged improvement stems from dividing the pilot
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`subcarriers “into two different groups according to their functionalities” to
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`“provide[] for a careful and systematic consideration of the unique requirements of
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`the pilot subcarriers.” EX1001, 1:65-2:2, 3:10-12.
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`36. Thus, to the extent the Background criticizes pilot patterns at all, such
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`criticism was aimed at the use of cell-specific pilot patterns in systems that do not
`
`divide their pilots into two groups according to their functionalities. And the
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`criticism is mild criticism at most. The Background acknowledges that the
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`technique “m