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`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
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`LG ELECTRONICS, INC.
`Petitioner,
`v.
`CONSTELLATION DESIGNS, LLC
`Patent Owner.
`________________
`
`Case IPR2023-00319
`U.S. Patent 10,693,700
`
`________________
`
`PETITIONER’S SUR-REPLY TO PATENT OWNER SUR-REPLY
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`
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`Proceeding No.: IPR2023-00319
`IPR of U.S. Patent No. 10,693,700
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`TABLE OF CONTENTS
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`I.
`
`DR. CAIRE CONFIRMED THAT CLAIM 5 INVOLVES A COMPARING
`
`OPERATION—WHICH IS NOT DESCRIBED IN THE ’777 PATENT ..... 1
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`II.
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`FUENTES AND DR. CAIRE CONFIRM THAT NON-UNIFORM
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`MULTIDIMENSIONAL SYMBOL CONSTELLATIONS OPTIMIZED IN
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`2D HAVE DIFFERENT CAPACITY CHARACTERISTICS THAN NON-
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`UNIFORM MULTIDIMENSIONAL SYMBOL CONSTELLATIONS
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`OPTIMIZED IN 1D AND ORTHOGONALIZED TO 2D............................. 2
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`III.
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`PO HAS FAILED TO ESTABLISH THAT THE ’777 PATENT
`
`DESCRIBES THE CLAIMED NON-UNIFORM MULTIDIMENSIONAL
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`SYMBOL CONSTELLATION FEATURES ................................................. 4
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`IV. PO’S NEW ARGUMENT ALLEGATIONS ARE WITHOUT MERIT ....... 7
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`V. DR. CAIRE’S DECLARATION SHOULD BE GIVEN MINIMUM
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`WEIGHT, IF ANY, BECAUSE HE ACKNOWLEDGED THAT HE DID
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`NOT REVIEW THE ’777 PATENT, DID NOT UNDERSTAND CLAIM 5,
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`AND USED A DIFFERENT POSITA STANDARD ..................................... 8
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`EXHIBITS
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`LGE1001
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`U.S. Patent No. 10,693,700
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`
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`LGE1002
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`LGE1003
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`LGE1004
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`LGE1005
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`LGE1006
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`LGE1007
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`LGE1008
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`LGE1009
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`LGE1010
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`LGE1011
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`LGE1012
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`LGE1013
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`LGE1014
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`Prosecution History for U.S. Patent No. 10,693,700
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`Expert Declaration of Dr. Bertrand Hochwald
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`Ulrich Reimers et al., DVB The Family of International
`Standards for Digital Video Broadcasting, Second Edition,
`2005 (“Ulrich”)
`
`RESERVED
`
`U.S. Provisional application No. 60/933,319 (“’319
`Provisional”)
`
`Declaration of June Munford (ATSC322)
`
`Second Stipulation by Petitioner, LGE, Constellation Designs,
`LLC v. LG Electronics, Inc. et al, Case No. 2:21-cv-00448
`(E.D. Tex.)
`
`RESERVED
`
`De Gaudenzi et al., Turbo-coded APSK modulations design for
`satellite broadband communications, Int. J. Satell. Commun.
`Network. 2006; 24:261–281, Published online 19 May 2006 in
`Wiley InterScience (“DeGaudenzi”)
`
`ii
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`
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`LGE1015
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`LGE1016
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`LGE1017
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`LGE1018
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`LGE1019
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`LGE1020
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`U.S. Patent No. 7,978,777
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`RESERVED
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`RESERVED
`
`Memorandum, Interim Procedure for Discretionary Denials in
`AIA Post-Grant Proceedings with Parallel District Court
`Litigation (USPTO June 21, 2022) (“Interim Procedure”)
`
`Docket Control Order, Constellation Designs, LLC v. LG
`Electronics, Inc. et al, Case No. 2:21-cv-00448 (E.D. Tex.)
`
`Complaint, Constellation Designs, LLC v. LG Electronics, Inc.
`et al, Case No. 2:21-cv-00448 (E.D. Tex.)
`
`LGE1021
`
`RESERVED
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`LGE1022
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`LGE1023
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`LGE1024
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`LGE1025
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`LGE1026
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`LGE1027
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`LGE1028
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`ATSC Recommended Practice: Guidelines for the Physical
`Layer Protocol, Document no. A/327:2018
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`ATSC 3.0 Standard: Physical Layer Protocol, Document no.
`A/322:2018
`
`Loghin, et al., Non-Uniform Constellations for ATSC 3.0, IEEE
`Transactions on Broadcasting, Vol 62, No. 1, March 2016.
`(“Loghin”)
`
`G. Ungerboeck, Channel Coding with Multilevel/Phase Signals,
`IEEE Trans. Inform. Theory, Vol. IT-28, No. 1, Jan. 1982, pp.
`55-67 (“Ungerboeck”)
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`Declaration of June Munford (ATSC327)
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`Declaration of June Munford (DG)
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`Declaration of June Munford (Loghin)
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`iii
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`LGE1029
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`LGE1030
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`Second Declaration of Dr. Bertrand Hochwald
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`Muela, Manuel Fuentes, Non-Uniform Constellations for Next-
`Generation Digital Terrestrial Broadcast Systems,
`Departamento de Comunicaciones Universitat Politècnica de
`València, June 2017. (“Fuentes”)
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`LGE1031
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`Proakis, John G. Digital Communications, Fourth Edition,
`2000. (“Proakis”)
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`LGE1032
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`Transcript of the Deposition of Dr. Caire
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`iv
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`For the reasons noted below, the Board should find that the ’700 Patent lacks
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`written description support and is not entitled to claim priority from U.S. Patent No.
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`7,978,777 (the “’777 patent”).
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`I.
`
`DR. CAIRE CONFIRMED THAT CLAIM 5 INVOLVES A
`COMPARING OPERATION—WHICH IS NOT DESCRIBED IN THE
`’777 PATENT
`LGE’s expert, Dr. Hochwald, had previously explained that one of the reasons
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`claims 5, 15, and 25 were not supported was because the claims “define[ ] a very
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`specific relative relationship between two groupings of non-uniform spaced
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`constellations” and “[n]othing in the ’777 patent provides sufficient written
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`description support for the comparison of these two groups of constellations.”
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`LGE1003, ¶[73]; Petition (Pet.), 13-14. During his deposition, Dr. Caire confirmed
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`that the features in claim 5 would be realized by performing a comparison of the
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`position of constellation points between different constellations. LGE1032, 163:6-
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`165:21 (Dr. Caire described comparing a non-uniform constellation in a subset of
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`constellations to a library of constellations – “How? By comparison. Every
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`constellation”). Accordingly, LGE and Patent Owner (PO)’s experts have both
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`indicated that a POSITA would have understood claim 5 to involve a comparison of
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`constellation points. But the ’777 patent does not describe such a comparing
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`operation and thus fails to provide support for claims 5, 15, and 25. Notably, PO’s
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`counsel did not address this argument in its reply, instead choosing to dodge the
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`1
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`argument under the cover of a purported missing claim construction, which clearly
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`is not necessary here, as indicated by both experts’ statements. Patent Owner
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`Response (Paper 12/POR), 41.
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`II.
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`FUENTES AND DR. CAIRE CONFIRM THAT NON-UNIFORM
`MULTIDIMENSIONAL SYMBOL CONSTELLATIONS
`OPTIMIZED IN 2D HAVE DIFFERENT CAPACITY
`CHARACTERISTICS THAN NON-UNIFORM
`MULTIDIMENSIONAL SYMBOL CONSTELLATIONS
`OPTIMIZED IN 1D AND ORTHOGONALIZED TO 2D
`PO misunderstood LGE’s remarks in the Petitioner Reply, and, in responding,
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`further confirmed LGE’s argument that optimizing multidimensional constellations
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`is not the same as optimizing constellations in 1D and then converting the optimized
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`1D constellations to 2D constellations.
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`In particular, PO accuses LGE of having misunderstood Fuentes’ 1D-NUCs
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`as being one-dimensional and not two-dimensional. Patent Owner Sur-Reply (Paper
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`14/POSR), 21. PO misunderstands or mischaracterizes LGE’s position.
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`2
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`A quick look at Fuentes’ FIG. 1.2 makes it apparent that the 1D-64NUC
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`(center/orange) is a two-dimensional constellation. However, it is referred to as a
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`1D constellation because it is formed by optimizing a 1D constellation,
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`orthogonalizing
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`the 1D constellation, and creating
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`the resulting 64NUC
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`constellation which has the same capacity characteristics on a per dimension basis
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`as a 1D constellation—similar to the orthogonalized 2D constellations described in
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`the ’777 patent. As confirmed by Dr. Caire, such constellations are often referred
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`to as one-dimensional (LGE1032, 148:11-149:16) because they retain the 1D
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`characteristics on a per dimension basis relative to the 1D constellation used to form
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`them1.
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`
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`However, when a multidimensional (e.g., 2D) constellation is optimized in
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`multiple dimensions, the resulting constellation has different constellation points,
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`
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` Consistent with Dr. Caire’s testimony, the Petitioner Reply used the term 1D
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` 1
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`constellation or 1D-NUCs in the discussion of Fuentes because the capacity
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`characteristics of the 1D NUCs are the same as 2D constellations that are formed
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`by orthogonalizing the 1D NUCs. The “1D” or “2D” thus referred to the
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`dimensions optimized or for which capacity characteristics were obtained, not
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`necessarily the actual number of dimensions in the constellation.
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`3
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`shape, and capacity characteristics as shown in the 2D-64NUC on the right side
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`(green box) of FIG. 1.2. Claims 5, 15, and 25 are similarly directed to the
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`characteristics (parallel decoding capacity, SNR) of multidimensional symbol
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`constellations, not 1D constellations. But the ’777 patent does not describe the
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`parallel decoding capacity or SNR characteristics of multidimensional symbol
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`constellations optimized in multiple dimensions, and thus fails to provide support
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`for the claimed features. Put simply, the ’777 patent provides disclosure directed to
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`the center figure of Fuentes’ FIG. 1.2, whereas the claims are directed to the right
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`figure of Fuentes’ FIG. 1.2. Dr. Caire also confirmed that these constellations are
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`generated as a result of different optimizations. LGE1032, 153:2-8.
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`III. PO HAS FAILED TO ESTABLISH THAT THE ’777 PATENT
`DESCRIBES THE CLAIMED NON-UNIFORM
`MULTIDIMENSIONAL SYMBOL CONSTELLATION FEATURES
`In its sur-reply, PO alleges that LGE reads “optimization” into the claims.
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`POSR, 12. Such allegations are without merit. Specifically, in its POR, PO points
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`to the ’777 patent’s disclosure of optimizing constellations as allegedly providing
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`support for claims 5, 15, and 25. POR, 40-45. Yet, when LGE pointed to
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`deficiencies in the optimization-related disclosure relied upon by PO, LGE is
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`accused of reading “optimization” into the claims. Lacking substance, such
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`accusations merely serve to distract from the clear lack of written description
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`support of the claimed features in the ’777 patent.
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`4
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`Importantly, despite having numerous opportunities, to date, PO has failed to
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`identify adequate written description support for claims 5, 15, and 25. For
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`instance, with respect to the first approach of optimization, PO argues that because
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`the ’777 patent includes a general statement mentioning the optimizing of QAMs
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`over an additional degree of freedom (N-degrees of freedom) and because “[s]uch
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`constructions constitute embodiments of the invention,” the ’777 patent provides
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`written description support. LGE1015, 12:38-48.
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`However, in this short paragraph of the ’777 patent, there is no mention of
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`SNR, parallel decoding capacity, or non-uniformity of the constellations—features
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`which are the focus of claims 5, 15, 25. Id. As noted in the Petitioner Reply, the
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`’777 patent explains that the “complexity of the optimization step grows
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`exponentially in the number of dimensions as does the complexity of the resulting
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`receiver de-mapper,” but then provides no further description or even explanation
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`of which optimization function is used or how optimization would be performed.
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`When asked during his deposition “why does the complexity of the resulting
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`receiver demapper increase exponentially,” Dr. Caire stated “[t]hat's very difficult
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`to explain” and that his explanation will “need a little bit of time” before providing
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`several pages of explanation—none of which can be found in the ’777 patent.
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`LGE1032, 143:8-145:11. For instance, Dr. Caire explains why multi-dimensional
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`constellations involve exponential growth and that “Exponential is very bad.” Id.
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`5
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`Dr. Caire also provided a lengthy explanation for why different demappers may be
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`needed for 1D constellations and 2D constellations. LGE1032, 72:9-76:4. Again,
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`none of this description can be found in the ’777 patent. Consistent with this lack
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`of disclosure, PO has captured greater patent coverage than it is entitled. Indeed,
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`while the claims are directed to “multidimensional” symbol constellations, the ’777
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`patent even fails to describe constellations that have 3 dimensions (much less N
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`dimensions) with the claimed characteristics, as acknowledged by Dr. Caire.
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`LGE1032, 60:11-13.
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`With respect to the second approach of optimization, PO has not provided
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`any evidence that describes how forming a 2D constellation from orthogonalized
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`1D constellations can provide the type of non-uniform multidimensional symbol
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`constellation parallel decoding capacity and SNR characteristics being claimed in
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`claims 5, 15, and 25. Nor can it. There is no disclosure in the ’777 patent of
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`further optimizing multidimensional constellations after forming them from
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`orthogonalized 1D constellations. Dr. Caire acknowledged that the parallel
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`decoding capacity can change and is not the same when increasing dimensions
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`(and particularly when constellations are considered as a whole, not on a per
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`dimension basis). LGE1032, 122:7-25, 123:1-6, 124:2-11 (“an example in which
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`the capacity is not the same … would be an example in which the constellation in
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`two dimensions is not the Cartesian product of two identical one-dimensional
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`constellations”). Fuentes also explains that BICM capacity gain, and SNR change
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`when the constellation order (dimensions) change. LGE1030, 75-77. Thus, while
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`claims 5, 15, and 25 are focused on the parallel decoding capacity and SNR of non-
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`uniform multidimensional symbol constellations, the disclosure in the ’777 patent
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`is focused on 1D capacity characteristics or per dimension characteristics of 2D
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`constellations. This is why all the figures that PO points to for support describe
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`1D-optimized PAM constellations.
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`IV. PO’S NEW ARGUMENT ALLEGATIONS ARE WITHOUT MERIT
`For several reasons, PO incorrectly argues that the Petitioner Reply includes
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`new arguments and should therefore be excluded. POSR, 3-10.
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`Under 37 C.F.R. § 42.23(b), a petitioner is allowed to “respond to arguments
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`raised in the corresponding opposition patent owner preliminary response, or patent
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`owner response.” The Federal Circuit recently affirmed that a Petitioner can expand
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`on previous arguments in the Petition and can provide responsive arguments in a
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`Petitioner Reply. Rembrant Diagnostics, LP v. Alere, Inc., 2021-1796, 10-16 (Fed.
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`Cir. 2023). The Court explained that “the very nature of the reply and sur-reply
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`briefs are to respond (whether to refute, rebut, explain, discredit, and so on) to prior
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`raised arguments,” and that when a reply is responsive but still pursues the “same
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`legal ground,” such arguments are permissible. Id., 12. The Court also “cautioned
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`the Board not to parse ‘arguments on reply with too fine of a filter.’” Id., 11 (quoting
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`Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1380 (Fed. Cir. 2015)).
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`Like in Rembrandt, LGE’s arguments in the Petitioner Reply are responsive
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`in nature and remain directed to the same legal invalidity ground and the same claim
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`features alleged to be lacking support in the Petition. Specifically, in response to the
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`Petition, PO relied upon different optimization-related disclosure for support of
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`claims 5, 15, and 25. POR, 42-45. In the Petitioner Reply, LGE explicitly cited to
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`the arguments in the POR and provided responsive arguments. See, e.g., Pet. Rep.,
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`2-4 (“Patent Owner contends that there are two approaches for optimizing
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`multidimensional QAM constellations. POR, 25-26. … With respect to the first
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`approach, the ’700 patent is devoid of any details for directly optimizing each degree
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`of freedom.”) Thus, LGE’s Petitioner Reply arguments are responsive, permissible,
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`and should not be excluded.
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`Case law cited by PO in the sur-reply does not supersede Rembrandt. For
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`instance, in Wasica, the Petitioner did not make out its obviousness case in its
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`petition, and switched to a new obviousness theory in its reply. This is not the case
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`in this proceeding, as LGE still maintains that the ’777 patent lacks written
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`description support for the exact same claimed features in the ’700 patent and
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`continues to identify deficiencies in the evidence and arguments provided by PO.
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`V. DR. CAIRE’S DECLARATION SHOULD BE GIVEN MINIMUM
`WEIGHT, IF ANY, BECAUSE HE ACKNOWLEDGED THAT HE
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`DID NOT REVIEW THE ’777 PATENT, DID NOT UNDERSTAND
`CLAIM 5, AND USED A DIFFERENT POSITA STANDARD
`During his deposition, Dr. Caire confirmed that he never reviewed the ’777
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`patent (EX1015), which is one of the documents being examined for written
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`description support, when preparing his second declaration (EX2025). LGE1032,
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`12:18-13:8 (reproduced below). While Petitioner understands that the disclosures
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`of the ’700 and ’777 patents are similar, EX1015 was cited throughout Dr. Caire’s
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`declaration (at least 17 times). The extensive citations to a document that he did not
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`review (and for which the citations are different from the ’700 patent) clearly
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`indicate that the statements in Dr. Caire’s declaration were not his own or, at a
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`minimum, were submitted without sufficient diligence to confirm whether his
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`statements were supported by the evidence he cited to in his declaration.
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`During his deposition, Dr. Caire also repeated several times that he did not
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`understand claim 5, and even engaged in an exercise with LGE’s counsel to rewrite
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`claim 5. LGE1032, 153:14-156:9 (“I confirm that, in my opinion, it [claim 5] is not
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`clear”), 168:1-25 (“I do not understand what each of the plurality means”), 169:17-
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`173:22. Moreover, in forming his opinions, Dr. Caire applied a definition of a
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`POSITA that required an education level (PhD and some years of work experience)
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`that exceeded the level specified by the POSITA definition used by the Board and
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`the parties. LGE1032, 22:20-23:19 (“I would say probably a person with a Ph.D. in
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`electrical engineering, specialized with a thesis done in these topics, and possibly
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`some years of work after Ph.D. … Normal students, in my experience, cannot read
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`and understand papers like the ones that are in the exhibits”). Taken as a whole, Dr.
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`Caire’s testimony should be accorded minimum weight, if any, because (1) he
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`confessed to not understanding the claim(s) at issue, (2) he applied a different
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`POSITA standard and thereby cannot speak to what a POSITA would have known
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`or understood, and (3) he did not review the document he repeatedly cited to for
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`support in his declaration.
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`Notably, Dr. Caire’s first declaration (EX2001) did not address claims 5, 15,
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`and 25. Thus, if the Board agrees that Dr. Caire’s second declaration (EX2025)
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`should be accorded minimal weight for the reasons noted above, the evidentiary
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`record in this proceeding is lopsided, with LGE providing multiple expert
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`declarations and corroborating references and PO only providing a single
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`questionable expert declaration in response.
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`Respectfully submitted,
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`/Usman Khan/
`W. Karl Renner, Reg. No. 41,265
`Jeremy J. Monaldo, Reg. No. 58,680
`Patrick Darno, Reg. No. 69,205
`Usman A. Khan, Reg. No. 70,439
`Fish & Richardson P.C.
`60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5553
`F: 877-769-7945
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`Dated: April 3, 2024
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4)(i), the undersigned certifies that on April
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`3, 2024, a complete and entire copy of this Petitioner Sur-Reply and all supporting
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`exhibits were provided via email to the Patent Owner, by serving the
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`correspondence address of record as follows:
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`
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`William A. Meunier (Reg. No. 41,193)
`Michael T. Renaud (Reg. No. 44,299)
`Kevin C. Amendt (Reg. No. 69,361)
`MINTZ, LEVIN, COHN, FERRIS, GLOVSKY AND POPEO, P.C.
`WAMeunier@mintz.com
`MTRenaud@mintz.com
`KCAmendt@mintz.com
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`/Crena Pacheco/
`Crena Pacheco
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`pacheco@fr.com
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