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`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`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
`
`
`
`
`
`
`
`
`
`

`

`Proceeding No.: IPR2023-00319
`IPR of U.S. Patent No. 10,693,700
`
`
`TABLE OF CONTENTS
`
`I. 
`
`DR. CAIRE CONFIRMED THAT CLAIM 5 INVOLVES A COMPARING
`
`OPERATION—WHICH IS NOT DESCRIBED IN THE ’777 PATENT ..... 1 
`
`II. 
`
`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............................. 2 
`
`III. 
`
`PO HAS FAILED TO ESTABLISH THAT THE ’777 PATENT
`
`DESCRIBES THE CLAIMED NON-UNIFORM MULTIDIMENSIONAL
`
`SYMBOL CONSTELLATION FEATURES ................................................. 4 
`
`IV.  PO’S NEW ARGUMENT ALLEGATIONS ARE WITHOUT MERIT ....... 7 
`
`V.  DR. CAIRE’S DECLARATION SHOULD BE GIVEN MINIMUM
`
`WEIGHT, IF ANY, BECAUSE HE ACKNOWLEDGED THAT HE DID
`
`NOT REVIEW THE ’777 PATENT, DID NOT UNDERSTAND CLAIM 5,
`
`AND USED A DIFFERENT POSITA STANDARD ..................................... 8 
`
`
`
`i
`
`

`

`Proceeding No.: IPR2023-00319
`IPR of U.S. Patent No. 10,693,700
`
`
`EXHIBITS
`
`LGE1001
`
`
`
`U.S. Patent No. 10,693,700
`
`
`
`LGE1002
`
`LGE1003
`
`LGE1004
`
`LGE1005
`
`LGE1006
`
`LGE1007
`
`LGE1008
`
`LGE1009
`
`LGE1010
`
`LGE1011
`
`LGE1012
`
`LGE1013
`
`LGE1014
`
`Prosecution History for U.S. Patent No. 10,693,700
`
`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
`
`

`

`LGE1015
`
`LGE1016
`
`LGE1017
`
`LGE1018
`
`LGE1019
`
`LGE1020
`
`Proceeding No.: IPR2023-00319
`IPR of U.S. Patent No. 10,693,700
`
`
`U.S. Patent No. 7,978,777
`
`RESERVED
`
`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
`
`LGE1022
`
`LGE1023
`
`LGE1024
`
`LGE1025
`
`LGE1026
`
`LGE1027
`
`LGE1028
`
`ATSC Recommended Practice: Guidelines for the Physical
`Layer Protocol, Document no. A/327:2018
`
`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”)
`
`Declaration of June Munford (ATSC327)
`
`Declaration of June Munford (DG)
`
`Declaration of June Munford (Loghin)
`
`iii
`
`

`

`LGE1029
`
`LGE1030
`
`Proceeding No.: IPR2023-00319
`IPR of U.S. Patent No. 10,693,700
`
`
`Second Declaration of Dr. Bertrand Hochwald
`
`Muela, Manuel Fuentes, Non-Uniform Constellations for Next-
`Generation Digital Terrestrial Broadcast Systems,
`Departamento de Comunicaciones Universitat Politècnica de
`València, June 2017. (“Fuentes”)
`
`LGE1031
`
`Proakis, John G. Digital Communications, Fourth Edition,
`2000. (“Proakis”)
`
`LGE1032
`
`Transcript of the Deposition of Dr. Caire
`
`iv
`
`

`

`Proceeding No.: IPR2023-00319
`IPR of U.S. Patent No. 10,693,700
`
`For the reasons noted below, the Board should find that the ’700 Patent lacks
`
`written description support and is not entitled to claim priority from U.S. Patent No.
`
`7,978,777 (the “’777 patent”).
`
`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
`
`claims 5, 15, and 25 were not supported was because the claims “define[ ] a very
`
`specific relative relationship between two groupings of non-uniform spaced
`
`constellations” and “[n]othing in the ’777 patent provides sufficient written
`
`description support for the comparison of these two groups of constellations.”
`
`LGE1003, ¶[73]; Petition (Pet.), 13-14. During his deposition, Dr. Caire confirmed
`
`that the features in claim 5 would be realized by performing a comparison of the
`
`position of constellation points between different constellations. LGE1032, 163:6-
`
`165:21 (Dr. Caire described comparing a non-uniform constellation in a subset of
`
`constellations to a library of constellations – “How? By comparison. Every
`
`constellation”). Accordingly, LGE and Patent Owner (PO)’s experts have both
`
`indicated that a POSITA would have understood claim 5 to involve a comparison of
`
`constellation points. But the ’777 patent does not describe such a comparing
`
`operation and thus fails to provide support for claims 5, 15, and 25. Notably, PO’s
`
`counsel did not address this argument in its reply, instead choosing to dodge the
`
`1
`
`

`

`Proceeding No.: IPR2023-00319
`IPR of U.S. Patent No. 10,693,700
`
`argument under the cover of a purported missing claim construction, which clearly
`
`is not necessary here, as indicated by both experts’ statements. Patent Owner
`
`Response (Paper 12/POR), 41.
`
`II.
`
`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,
`
`further confirmed LGE’s argument that optimizing multidimensional constellations
`
`is not the same as optimizing constellations in 1D and then converting the optimized
`
`1D constellations to 2D constellations.
`
`In particular, PO accuses LGE of having misunderstood Fuentes’ 1D-NUCs
`
`as being one-dimensional and not two-dimensional. Patent Owner Sur-Reply (Paper
`
`14/POSR), 21. PO misunderstands or mischaracterizes LGE’s position.
`
`
`
`2
`
`

`

`Proceeding No.: IPR2023-00319
`IPR of U.S. Patent No. 10,693,700
`
`A quick look at Fuentes’ FIG. 1.2 makes it apparent that the 1D-64NUC
`
`(center/orange) is a two-dimensional constellation. However, it is referred to as a
`
`1D constellation because it is formed by optimizing a 1D constellation,
`
`orthogonalizing
`
`the 1D constellation, and creating
`
`the resulting 64NUC
`
`constellation which has the same capacity characteristics on a per dimension basis
`
`as a 1D constellation—similar to the orthogonalized 2D constellations described in
`
`the ’777 patent. As confirmed by Dr. Caire, such constellations are often referred
`
`to as one-dimensional (LGE1032, 148:11-149:16) because they retain the 1D
`
`characteristics on a per dimension basis relative to the 1D constellation used to form
`
`them1.
`
`
`
`However, when a multidimensional (e.g., 2D) constellation is optimized in
`
`multiple dimensions, the resulting constellation has different constellation points,
`
`
`
` Consistent with Dr. Caire’s testimony, the Petitioner Reply used the term 1D
`
` 1
`
`constellation or 1D-NUCs in the discussion of Fuentes because the capacity
`
`characteristics of the 1D NUCs are the same as 2D constellations that are formed
`
`by orthogonalizing the 1D NUCs. The “1D” or “2D” thus referred to the
`
`dimensions optimized or for which capacity characteristics were obtained, not
`
`necessarily the actual number of dimensions in the constellation.
`
`3
`
`

`

`Proceeding No.: IPR2023-00319
`IPR of U.S. Patent No. 10,693,700
`
`shape, and capacity characteristics as shown in the 2D-64NUC on the right side
`
`(green box) of FIG. 1.2. Claims 5, 15, and 25 are similarly directed to the
`
`characteristics (parallel decoding capacity, SNR) of multidimensional symbol
`
`constellations, not 1D constellations. But the ’777 patent does not describe the
`
`parallel decoding capacity or SNR characteristics of multidimensional symbol
`
`constellations optimized in multiple dimensions, and thus fails to provide support
`
`for the claimed features. Put simply, the ’777 patent provides disclosure directed to
`
`the center figure of Fuentes’ FIG. 1.2, whereas the claims are directed to the right
`
`figure of Fuentes’ FIG. 1.2. Dr. Caire also confirmed that these constellations are
`
`generated as a result of different optimizations. LGE1032, 153:2-8.
`
`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.
`
`POSR, 12. Such allegations are without merit. Specifically, in its POR, PO points
`
`to the ’777 patent’s disclosure of optimizing constellations as allegedly providing
`
`support for claims 5, 15, and 25. POR, 40-45. Yet, when LGE pointed to
`
`deficiencies in the optimization-related disclosure relied upon by PO, LGE is
`
`accused of reading “optimization” into the claims. Lacking substance, such
`
`accusations merely serve to distract from the clear lack of written description
`
`support of the claimed features in the ’777 patent.
`
`4
`
`

`

`Proceeding No.: IPR2023-00319
`IPR of U.S. Patent No. 10,693,700
`
`Importantly, despite having numerous opportunities, to date, PO has failed to
`
`identify adequate written description support for claims 5, 15, and 25. For
`
`instance, with respect to the first approach of optimization, PO argues that because
`
`the ’777 patent includes a general statement mentioning the optimizing of QAMs
`
`over an additional degree of freedom (N-degrees of freedom) and because “[s]uch
`
`constructions constitute embodiments of the invention,” the ’777 patent provides
`
`written description support. LGE1015, 12:38-48.
`
`However, in this short paragraph of the ’777 patent, there is no mention of
`
`SNR, parallel decoding capacity, or non-uniformity of the constellations—features
`
`which are the focus of claims 5, 15, 25. Id. As noted in the Petitioner Reply, the
`
`’777 patent explains that the “complexity of the optimization step grows
`
`exponentially in the number of dimensions as does the complexity of the resulting
`
`receiver de-mapper,” but then provides no further description or even explanation
`
`of which optimization function is used or how optimization would be performed.
`
`When asked during his deposition “why does the complexity of the resulting
`
`receiver demapper increase exponentially,” Dr. Caire stated “[t]hat's very difficult
`
`to explain” and that his explanation will “need a little bit of time” before providing
`
`several pages of explanation—none of which can be found in the ’777 patent.
`
`LGE1032, 143:8-145:11. For instance, Dr. Caire explains why multi-dimensional
`
`constellations involve exponential growth and that “Exponential is very bad.” Id.
`
`5
`
`

`

`Dr. Caire also provided a lengthy explanation for why different demappers may be
`
`Proceeding No.: IPR2023-00319
`IPR of U.S. Patent No. 10,693,700
`
`
`needed for 1D constellations and 2D constellations. LGE1032, 72:9-76:4. Again,
`
`none of this description can be found in the ’777 patent. Consistent with this lack
`
`of disclosure, PO has captured greater patent coverage than it is entitled. Indeed,
`
`while the claims are directed to “multidimensional” symbol constellations, the ’777
`
`patent even fails to describe constellations that have 3 dimensions (much less N
`
`dimensions) with the claimed characteristics, as acknowledged by Dr. Caire.
`
`LGE1032, 60:11-13.
`
`With respect to the second approach of optimization, PO has not provided
`
`any evidence that describes how forming a 2D constellation from orthogonalized
`
`1D constellations can provide the type of non-uniform multidimensional symbol
`
`constellation parallel decoding capacity and SNR characteristics being claimed in
`
`claims 5, 15, and 25. Nor can it. There is no disclosure in the ’777 patent of
`
`further optimizing multidimensional constellations after forming them from
`
`orthogonalized 1D constellations. Dr. Caire acknowledged that the parallel
`
`decoding capacity can change and is not the same when increasing dimensions
`
`(and particularly when constellations are considered as a whole, not on a per
`
`dimension basis). LGE1032, 122:7-25, 123:1-6, 124:2-11 (“an example in which
`
`the capacity is not the same … would be an example in which the constellation in
`
`two dimensions is not the Cartesian product of two identical one-dimensional
`
`6
`
`

`

`constellations”). Fuentes also explains that BICM capacity gain, and SNR change
`
`Proceeding No.: IPR2023-00319
`IPR of U.S. Patent No. 10,693,700
`
`
`when the constellation order (dimensions) change. LGE1030, 75-77. Thus, while
`
`claims 5, 15, and 25 are focused on the parallel decoding capacity and SNR of non-
`
`uniform multidimensional symbol constellations, the disclosure in the ’777 patent
`
`is focused on 1D capacity characteristics or per dimension characteristics of 2D
`
`constellations. This is why all the figures that PO points to for support describe
`
`1D-optimized PAM constellations.
`
`IV. PO’S NEW ARGUMENT ALLEGATIONS ARE WITHOUT MERIT
`For several reasons, PO incorrectly argues that the Petitioner Reply includes
`
`new arguments and should therefore be excluded. POSR, 3-10.
`
`Under 37 C.F.R. § 42.23(b), a petitioner is allowed to “respond to arguments
`
`raised in the corresponding opposition patent owner preliminary response, or patent
`
`owner response.” The Federal Circuit recently affirmed that a Petitioner can expand
`
`on previous arguments in the Petition and can provide responsive arguments in a
`
`Petitioner Reply. Rembrant Diagnostics, LP v. Alere, Inc., 2021-1796, 10-16 (Fed.
`
`Cir. 2023). The Court explained that “the very nature of the reply and sur-reply
`
`briefs are to respond (whether to refute, rebut, explain, discredit, and so on) to prior
`
`raised arguments,” and that when a reply is responsive but still pursues the “same
`
`legal ground,” such arguments are permissible. Id., 12. The Court also “cautioned
`
`the Board not to parse ‘arguments on reply with too fine of a filter.’” Id., 11 (quoting
`
`7
`
`

`

`Proceeding No.: IPR2023-00319
`IPR of U.S. Patent No. 10,693,700
`
`Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1380 (Fed. Cir. 2015)).
`
`Like in Rembrandt, LGE’s arguments in the Petitioner Reply are responsive
`
`in nature and remain directed to the same legal invalidity ground and the same claim
`
`features alleged to be lacking support in the Petition. Specifically, in response to the
`
`Petition, PO relied upon different optimization-related disclosure for support of
`
`claims 5, 15, and 25. POR, 42-45. In the Petitioner Reply, LGE explicitly cited to
`
`the arguments in the POR and provided responsive arguments. See, e.g., Pet. Rep.,
`
`2-4 (“Patent Owner contends that there are two approaches for optimizing
`
`multidimensional QAM constellations. POR, 25-26. … With respect to the first
`
`approach, the ’700 patent is devoid of any details for directly optimizing each degree
`
`of freedom.”) Thus, LGE’s Petitioner Reply arguments are responsive, permissible,
`
`and should not be excluded.
`
`
`
`Case law cited by PO in the sur-reply does not supersede Rembrandt. For
`
`instance, in Wasica, the Petitioner did not make out its obviousness case in its
`
`petition, and switched to a new obviousness theory in its reply. This is not the case
`
`in this proceeding, as LGE still maintains that the ’777 patent lacks written
`
`description support for the exact same claimed features in the ’700 patent and
`
`continues to identify deficiencies in the evidence and arguments provided by PO.
`
`V. DR. CAIRE’S DECLARATION SHOULD BE GIVEN MINIMUM
`WEIGHT, IF ANY, BECAUSE HE ACKNOWLEDGED THAT HE
`
`8
`
`

`

`Proceeding No.: IPR2023-00319
`IPR of U.S. Patent No. 10,693,700
`
`
`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
`
`patent (EX1015), which is one of the documents being examined for written
`
`description support, when preparing his second declaration (EX2025). LGE1032,
`
`12:18-13:8 (reproduced below). While Petitioner understands that the disclosures
`
`of the ’700 and ’777 patents are similar, EX1015 was cited throughout Dr. Caire’s
`
`declaration (at least 17 times). The extensive citations to a document that he did not
`
`review (and for which the citations are different from the ’700 patent) clearly
`
`indicate that the statements in Dr. Caire’s declaration were not his own or, at a
`
`minimum, were submitted without sufficient diligence to confirm whether his
`
`statements were supported by the evidence he cited to in his declaration.
`
`
`
`During his deposition, Dr. Caire also repeated several times that he did not
`
`understand claim 5, and even engaged in an exercise with LGE’s counsel to rewrite
`
`claim 5. LGE1032, 153:14-156:9 (“I confirm that, in my opinion, it [claim 5] is not
`
`clear”), 168:1-25 (“I do not understand what each of the plurality means”), 169:17-
`
`9
`
`

`

`Proceeding No.: IPR2023-00319
`IPR of U.S. Patent No. 10,693,700
`
`173:22. Moreover, in forming his opinions, Dr. Caire applied a definition of a
`
`POSITA that required an education level (PhD and some years of work experience)
`
`that exceeded the level specified by the POSITA definition used by the Board and
`
`the parties. LGE1032, 22:20-23:19 (“I would say probably a person with a Ph.D. in
`
`electrical engineering, specialized with a thesis done in these topics, and possibly
`
`some years of work after Ph.D. … Normal students, in my experience, cannot read
`
`and understand papers like the ones that are in the exhibits”). Taken as a whole, Dr.
`
`Caire’s testimony should be accorded minimum weight, if any, because (1) he
`
`confessed to not understanding the claim(s) at issue, (2) he applied a different
`
`POSITA standard and thereby cannot speak to what a POSITA would have known
`
`or understood, and (3) he did not review the document he repeatedly cited to for
`
`support in his declaration.
`
`Notably, Dr. Caire’s first declaration (EX2001) did not address claims 5, 15,
`
`and 25. Thus, if the Board agrees that Dr. Caire’s second declaration (EX2025)
`
`should be accorded minimal weight for the reasons noted above, the evidentiary
`
`record in this proceeding is lopsided, with LGE providing multiple expert
`
`declarations and corroborating references and PO only providing a single
`
`questionable expert declaration in response.
`
`
`
`
`
`10
`
`

`

`Proceeding No.: IPR2023-00319
`IPR of U.S. Patent No. 10,693,700
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`
`/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
`
`
`
`
`
`Dated: April 3, 2024
`
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`11
`
`

`

`Proceeding No.: IPR2023-00319
`IPR of U.S. Patent No. 10,693,700
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 CFR §§ 42.6(e)(4)(i), the undersigned certifies that on April
`
`3, 2024, a complete and entire copy of this Petitioner Sur-Reply and all supporting
`
`exhibits were provided via email to the Patent Owner, by serving the
`
`correspondence address of record as follows:
`
`
`
`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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