Trials@uspto.gov
`571-272-7822
`
`Paper 25
`Date: July 10, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LG ELECTRONICS, INC.,
`Petitioner,
`v.
`CONSTELLATION DESIGNS, LLC,
`Patent Owner.
`
`IPR2023-00319
`Patent 10,693,700 B1
`
`
`
`
`
`
`
`
`
`Before BRENT M. DOUGAL, MICHAEL T. CYGAN, and
`SCOTT RAEVSKY Administrative Patent Judges.
`
`DOUGAL, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining No Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
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`IPR2023-00319
`Patent 10,693,700 B1
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`I.
`INTRODUCTION
`Background and Summary
`A.
`Petitioner, LG Electronics Inc., filed a Petition to institute an inter
`partes review challenging the patentability of claims 5, 15, and 251 (the
`“challenged claims”) of U.S. Patent 10,693,700 B1 (Ex. 1001, “the ’700
`patent”). Paper 3 (“Petition” or “Pet.”). Patent Owner, Constellation
`Designs, LLC, filed a Preliminary Response. Paper 7. Applying the standard
`set forth in 35 U.S.C. § 314(a), we instituted inter partes review. Paper 10.
`Patent Owner filed a Response (Paper 12, “PO Resp.”), Petitioner
`filed a Reply (Paper 13, “Reply”), Patent Owner filed a Sur-reply (Paper 14,
`“PO Sur-reply”), and Petitioner filed a Sur-sur-reply (Paper 20, “Pet. Sur-
`reply”)2. An oral hearing was held on April 17, 2024, and a copy of the
`transcript is in the record. Paper 24 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This Decision is a Final
`Written Decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73 as to the
`patentability of the claims on which we instituted trial. Having reviewed the
`arguments of the parties and the supporting evidence, we determine that
`Petitioner has not shown by a preponderance of the evidence that the
`challenged claims are unpatentable.
`B.
`Related Matters
`The parties identify the following related district court litigation:
`Constellation Designs, LLC v. LG Electronics Inc. et al., No. 2:21-cv-00448
`(E.D. Tex.). Pet. 81; Paper 5, 1. Patent Owner also identifies the following
`
`
`1 Claims 2, 3, 12, 13, 22, and 23, though challenged by Petitioner, were
`disclaimed by Patent Owner after trial was instituted. Ex. 2024.
`2 The Petitioner Sur-reply was authorized in view of our authorization for
`Patent Owner to file declarant testimony with the Patent Owner Sur-reply.
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`related inter partes reviews: IPR2022-01482, IPR2022-01549, IPR2023-
`00228, IPR2023-00229, and IPR2023-00320. Paper 5, 1–2.
`C.
`The ’700 Patent
`The ’700 patent is directed to digital communication or transmission
`systems with “unequally spaced constellations.” Ex. 1001, 1:38–44. As
`background to the technology, “[a] digital communication system is used to
`transmit digital bits (sequences of 0s and 1s) from one device (a transmitter)
`to another (a receiver).” Ex. 2001 ¶ 12. Each digital communication system
`has a measurable “capacity,” which is the maximum amount of information
`that the system can reliably send over the channel. Id. ¶ 15. The transmitter
`maps each new bit sequence to constellation points. Id. ¶¶ 15, 18. “[A]
`‘constellation’ point is a carrier signal value (such as amplitude and/or
`phase) that can be used to represent a longer sequence of bits.” Id. ¶ 12. The
`receiver in turn attempts to detect symbols that were received, from the
`transmitter, by mapping a received signal to a constellation. Ex. 1001, 1:44–
`46. The minimum distance (dmin) between constellation points at high signal-
`to-noise ratios (SNRs) correlates to the capacity of the constellation, and
`accordingly, many communication systems aim to maximize this value in
`order to maximize capacity of the system. Ex. 2001 ¶¶ 46–54. This is to
`decrease the risk that the noise in the signal makes the signal unreadable,
`i.e., decreases the risk that the system is unable to determine which signal
`value was intended between two adjacent signal values.
`As a simple illustration, Patent Owner’s declarant, Dr. Giuseppe
`Caire, provides the following example of a one-dimensional constellation,
`with bit values (constellation label) and signal amplitude values
`(constellation location):
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`Constellation Label Constellation Location
`“00”
`0
`“01”
`.33
`“10”
`.66
`“11”
`1.0
`Ex. 2001 ¶ 30. An output based on this constellation, and including an
`illustration of signal noise, is reproduced below.
`
`
`Id. ¶ 33. The above figure, provided by Dr. Caire, is a graph of the signal
`amplitude, in volts, over time. As can be seen above, “a time-dependent
`continuous waveform is shown in black including noise, the average of the
`time-dependent continuous waveform is shown in red, the output of the
`demodulator is shown as discrete time values in black, and the figure is
`again annotated with the corresponding bit sequence.” Id. Thus, it can be
`seen how each bit value (constellation label) corresponds to the signal
`amplitude value (constellation location) in wave form. The receiver, with
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`information about the constellation, is thus able to determine the bit values
`communicated from the transmitter.
`As mentioned, the ’700 patent is directed to digital communication
`systems with “unequally spaced constellations.” Ex. 1001, 1:38–44. Rather
`than focusing on maintaining a minimum distance (dmin) between the signal
`values of the constellation, the ’700 patent attempts to provide “direct
`optimization of the constellation points of a communication system utilizing
`a capacity approaching channel code, [that] can yield different constellations
`depending on the SNR for which they are optimized” Id. at 5:11–16. The
`’700 patent explains that “capacity optimized constellation at low SNRs are
`geometrically shaped constellations that can achieve significantly higher
`performance gains (measured as reduction in minimum required SNR) than
`constellations that maximize dmin.” Id. at 8:24–29. The ’700 patent provides
`that “a constellation at one code rate can achieve gains that cannot be
`achieved at another code rate.” Id at 5:20–21. Dr. Caire provides one
`example of “a constellation optimized for a code rate of 1/2 provides gains
`when with a code rate of 1/2, but may not provide the same gains at other
`code rates, such as 2/3 code rate.” Ex. 2001 ¶ 60. Thus, “[i]nstead, when
`using a code rate of 2/3, a different constellation may be used – a
`constellation optimized for use at 2/3 code rate.” Id.
`“Capacity measures that can be used in the selection of the location of
`constellation points include . . . parallel decode (PD) capacity and joint
`capacity.” Ex. 1001, 5:6–8. The “PD capacity of a channel can be viewed in
`terms of the mutual information between the output bits of the encoder (such
`as an LDPC encoder) at the transmitter and the likelihoods computed by the
`demapper at the receiver,” and it is “influenced by both the placement of
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`points within the constellation and by the labelling assignments.” Id. at
`6:64–7:3. Joint capacity describes “the achievable capacity between the
`input of the mapper on the transmit side of the link and the output of the
`channel (including for example AWGN and Fading channels).” Id. at 7:18–
`21.
`
`Illustrative Claim(s)
`D.
`The challenged claims are all dependent claims and depend, directly
`or indirectly, from independent claims 1, 11, and 21, respectively. Claim 5
`depends from claim 1 and is illustrative:
`1. A communication system, comprising:
`a receiver capable of receiving signals via a communica-
`tion channel having a channel signal-to-noise ratio (SNR),
`wherein the receiver comprises:
`a demodulator capable of demodulating a received
`signal into a demodulated signal;
`a demapper, coupled to the demodulator, capable of
`determining likelihoods using the demodulated signal and
`a multidimensional symbol constellation selected from a
`plurality of multidimensional symbol constellations; and
`a decoder, coupled to the demapper, capable of us-
`ing the likelihoods determined by the demapper to provide
`a sequence of received bits based upon a low density parity
`check (LDPC) code;
`wherein the plurality of multidimensional symbol constel-
`lations comprises a plurality of different non-uniform multidi-
`mensional symbol constellations having the same number of
`constellation points, where the constellation points are non-uni-
`formly spaced in each degree of freedom available to the multi-
`dimensional symbol constellations;
`wherein the receiver is capable of selecting an LDPC code
`rate and multidimensional symbol constellation pair from a plu-
`rality of predetermined LDPC code rate and multidimensional
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`symbol constellation pairs, where each of the plurality of differ-
`ent non-uniform multidimensional symbol constellations is only
`included in one of the plurality of predetermined LDPC code rate
`and multidimensional symbol constellation pairs.
`5. The communication system of claim 1, wherein each of the
`plurality of different non-uniform multidimensional symbol con-
`stellations is capable of providing a greater parallel decoding ca-
`pacity at a specific SNR than the other symbol constellations in
`the plurality of multidimensional symbol constellations at the
`same SNR.
`Ex. 1001, 13:43–14:5, 14:65–15:3.
`E.
`Evidence
`Petitioner’s ground of unpatentability relies on the following
`evidence:
`
`Patent Document
`Name
`Barsoum or the ’777 patent US 7,978,777 B2 (July 12, 2011)
`
`Name
`
`ATSC3273
`
`Non-Patent Literature
`ATSC Recommended Practice:
`Guidelines for the Physical Layer
`Protocol (A/327), 8 Oct. 2018
`
`Author
`Advanced
`Television
`Systems
`Committee
`
`Exhibit
`1015
`
`Exhibit
`
`1022
`
`Asserted Grounds
`F.
`Petitioner asserts the following ground of unpatentability (Pet. 2),
`supported by the declaration of Dr. Bertrand Hochwald (Ex. 1003):
`Claim(s) Challenged
`35 U.S.C. §
`Reference(s)/Basis
`5, 15, 25
`103
`Barsoum, ATSC327
`
`
`
`
`3 Petitioner relies upon a declaration by June Mumford that expresses a
`public availability date of at least March 2019. Pet. 2; Ex. 2016, 6.
`
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`II. ANALYSIS
`Legal Standards
`A.
`Petitioner bears the burden to demonstrate unpatentability. Dynamic
`Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
`2015).
`A claim is unpatentable as obvious if “the differences between the
`subject matter sought to be patented and the prior art are such that the
`subject matter as a whole would have been obvious at the time the invention
`was made to a person having ordinary skill in the art to which said subject
`matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007)
`(quoting 35 U.S.C. § 103(a)). We resolve the question of obviousness based
`on underlying factual determinations, including: (1) the scope and content of
`the prior art; (2) any differences between the prior art and the claims; (3) the
`level of skill in the art; and (4) when in evidence, objective indicia of
`nonobviousness. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`We apply these principles to the Petition’s challenges.
`B.
`Level of Ordinary Skill in the Art
`We review the grounds of unpatentability in view of the
`understanding of a person of ordinary skill in the art at the time of the
`invention. Id. at 13, 17. Petitioner asserts that a person of ordinary skill in
`the art
`would have had at least a Master’s degree in an academic area
`emphasizing electrical engineering or a similar discipline, and at
`least two years of experience in the field working with, teaching,
`or researching communication systems including the use of con-
`stellations in transmitting signals between devices. [Ex.]1003,
`¶[93]. Superior education could compensate for a deficiency in
`work experience, and vice-versa. Id.
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`Pet. 28.
`Patent Owner does not address Petitioner’s level of skill. See PO
`Resp.
`Patent Owner’s declarant, Dr. Caire, also provides evidence that the
`level of skill includes: “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.” Ex. 1032, 22:20–23:19. Petitioner asserts that Dr. Caire is
`applying “an education level (PhD and some years of work experience) that
`exceeded the level specified by [Petitioner].” Pet. Sur-reply 10.
`We are persuaded that Petitioner’s proposal is consistent with the
`problems and solutions in the ’700 patent and prior art of record. We also
`find that Dr. Caire’s statement of a “Ph.D.,” “and possibly some years of
`work after Ph.D.” is consistent with Petitioner’s statement that the level of
`skill includes “[s]uperior education” to “compensate for a deficiency in work
`experience.” The complexity of the evidence of record emphasizes the
`importance of “at least two years of experience . . . including the use of
`constellations in transmitting signals between devices” or “[s]uperior
`education” in the same area.
`We adopt Petitioner’s definition of the level of skill as discussed
`above.
`Claim Construction
`C.
`In inter partes review, we construe claims using the same claim
`construction standard that would be used to construe the claim in a civil
`action under 35 U.S.C. § 282(b), including construing the claim in
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`accordance with the ordinary and customary meaning of such claim as
`understood by one of ordinary skill in the art and the prosecution history
`pertaining to the patent. 37 C.F.R. § 42.100(b) (2022).
`Petitioner asserts that no terms require express construction. Pet. 28.
`Patent Owner does not address claim construction. See PO Resp. We
`determine that no terms need to be construed. See Realtime Data, LLC v.
`Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to
`construe ‘only those terms . . . that are in controversy, and only to the extent
`necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am.
`Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
`D.
`Analysis of the Challenged Claims
`The Petition argues that dependent claims 5, 15, and 25 are obvious
`over the combination of Barsoum and ATSC327. Pet. 67–79.
`The ’700 patent states that it is a continuation of the ’777 patent (aka
`Barsoum). Ex. 1001 code (63). Petitioner challenges this claim to priority,
`arguing that the challenged claims do not have written description support in
`Barsoum. Pet. 13–19. Patent Owner disagrees, providing extensive
`discussions of the support in Barsoum (see PO Resp.; PO Sur-reply) which
`Petitioner addresses (see Reply; Pet. Sur-reply).4 Both asserted references
`
`
`4 Patent Owner argues that Petitioner has improperly abandoned its theories
`in the Petition concerning written description support. PO Sur-reply 3–4.
`Petitioner correctly argues that it is responding to Patent Owner’s arguments
`consistent with the position of the Petition. Pet. Sur-reply 7–8. Similar to
`Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1380
`(Fed. Cir. 2015), after Petitioner argued that Barsoum was prior art to the
`’700 patent, “[t]he burden of production then shifted to [the patent owner] to
`argue or produce evidence . . . that [Barsoum] is not prior art because the
`asserted claims in the [’700] patent are entitled to the benefit of [Barsoum].”
`Petitioner is then afforded an opportunity to combat Patent Owner’s
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`(Barsoum, ATSC327) are only prior art if the ’700 patent cannot claim
`priority to Barsoum for the benefit of the challenged claims.
`For the reasons expressed below, we determine that Petitioner has not
`shown that the challenged claims are unpatentable, as the ’700 patent finds
`written description support in Barsoum.
`1. Written Description Support
`To comply with the written description requirement, the specification
`“must describe the inventions sufficiently to convey to a person of skill in
`the art that the patentee had possession of the claimed invention at the time
`of the application, i.e., that the patentee invented what is claimed.”
`Lizardtech, Inc. v. Earth Res. Mapping Inc., 424 F.3d 1336, 1345 (Fed. Cir.
`2005).
`Neither party identifies any differences in the written description or
`figures of the ’700 patent and Barsoum. Rather, Petitioner admits that “the
`’700 patent and [Barsoum] share the same written description and
`drawings.” Pet. 30. Thus, when discussing written description support both
`parties at times refer to the two patents interchangeably.5 Based on our
`review of the ’700 patent and Barsoum, we find that they are identical in all
`relevant respects, except for having different claim sets and priority claims.
`
`
`arguments. To hold otherwise would require Petitioner to have a crystal ball
`to divine the arguments Patent Owner would make as to how the claims are
`supported by Barsoum. This of course does not shift the ultimate burden of
`persuasion from Petitioner. Dynamic Drinkware, 800 F.3d at 1378.
`5 Petitioner complains that for his second declaration, Patent Owner’s
`declarant Dr. Caire, reviewed the ’700 patent, but not Barsoum. Pet. Sur-
`reply 9. As we find, and Petitioner admits (Pet. 30), the ’700 patent and
`Barsoum contain identical disclosures in all relevant respects, Dr. Caire’s
`actions do not decrease the relevance or weight of his testimony as asserted
`by Petitioner. Pet. Sur-reply 10.
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`We further note that the ’700 patent incorporates Barsoum by reference, and
`thus includes all of the disclosure of Barsoum. Ex. 1001, 1:22–27.
`a)
`Claims 5, 15, 25
`Moving now to the claims at issue6, claim 5 requires, in relevant part:
`. . . each of the plurality of different non-uniform multidimen-
`sional symbol constellations is capable of providing a greater
`parallel decoding capacity at a specific SNR than the other sym-
`bol constellations in the plurality of multidimensional symbol
`constellations at the same SNR.
`Ex. 1001, 14:65–15:3. We use the language of claim 5 as representative as
`claims 15 and 25 are substantially similar. Id. at 16:65–17:3, 18:59–64.
`Patent Owner argues that Barsoum teaches that multidimensional
`symbol constellations can be optimized in two ways to provide the claimed
`greater capacity and other claimed requirements. PO Resp. 25–26. We
`address these methods in reverse order. Concerning the second, we find that
`Petitioner agrees that Barsoum teaches what Patent Owner argues, but
`
`
`6 Petitioner does not challenge the written description support of the
`independent claims from which the challenged claims depend. See Pet. 13–
`19. In fact, Petitioner, and Petitioner’s declarant, argue that the limitations of
`the independent claims are expressly taught by Barsoum, or would be
`understood, based on the teachings of the same. See e.g., id. at 39–51; Ex.
`1004 ¶¶ 122–144 (identifying both where Barsoum discloses limitations of
`claim 1, and what one of skill in art would understand based on the teachings
`of Barsoum). Petitioner says in some places that the limitations are obvious
`(see e.g., Pet. 42, 45), but elsewhere that they are disclosed (id. at 75; Ex.
`1003 ¶ 214 (“[Barsoum] discloses several features of claim 5 for the reasons
`set forth above. See [1pre] to [1f] [(i.e., claim 1)].”)). Patent Owner does not
`contest any of these arguments, and we find that Barsoum discloses, and
`therefore provides written description support, for all of the features of the
`independent claims based on the teachings of Barsoum and the
`understanding of one of skill in the art based on those teachings, as laid out
`by Petitioner (see e.g., Pet. 39–51).
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`incorrectly argues that the claims require “optimization” which is not set
`forth in the claim language. Concerning the first, we find that Petitioner
`incorrectly argues that the identified portions of the specification should be
`read without considering the disclosure as a whole.
`As outlined below, we agree with Patent Owner that either disclosure
`in Barsoum “sufficiently [] convey[s] to a person of skill in the art that the
`patentee had possession of the claimed invention at the time of the
`application.” Lizardtech, 424 F.3d at 1345.
`(1) Orthogonalize a PAM-8 into a QAM-64
`Patent Owner argues that Barsoum provides support for the
`challenged claims through its teachings of optimizing a multidimensional
`QAM constellation. PO Resp. 26–28, 40–45. Patent Owner argues that
`Barsoum teaches that “[an] approach to optimizing a multidimensional
`QAM constellation is to first optimize a PAM constellation, then apply that
`PAM constellation to both of the in-phase and quadrature components.” Id.
`at 26; see also id. at 26–28 (citing Ex. 1001, 3:25–34, 12:42–67, Figs. 13b,
`21; Barsoum (Ex. 1015), 3:9–19, 12:11–37, Figs. 13b, 21). Patent Owner
`explains that “[t]his approach uses the same 8 point PAM locations, which
`were optimized for capacity, to produce 64 point QAM locations that have
`been optimized for capacity.” Id. at 28.
`Patent Owner further argues that Barsoum “discloses that optimization
`of constellation points can yield different constellations depending on the
`signal to noise ratio (SNR) and code rate for which they are optimized,” and
`“that in many instances, a constellation optimized for one code rate can
`achieve gains that cannot be achieved at another code rate.” Id. (citing Ex.
`1001, 5:16–25; Barsoum, 4:62–5:7). Patent Owner further explains that “a
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`constellation optimized for a code rate of 1/2 provides gains when used with
`a code rate of 1/2, but may not provide the same gains at other code rates,
`such as 2/3 code rate. Instead, when using a code rate of 2/3, a different
`constellation may be used – a constellation optimized for use at 2/3 code
`rate.” Id. at 29.
`Patent Owner provides additional disclosure and discussion of specific
`examples, such as Figures 11b, 13b, and 21. Id. at 25–28, 43–45. Patent
`Owner argues that, for example, Figure 13b shows a PAM-8 constellation
`optimized for a SNR of 9.00 dB, and that “this constellation would provide
`greater capacity than all other PAM-8 (or QAM-64) constellations at that
`operating SNR of 9.00 dB, including the constellation defined by the
`locations indicated in the second column of figure 13b (i.e., the optimized
`constellation for an operating SNR of 5.27 dB).” Id. at 44–45. In other
`words, Figure 13b shows five constellations (i.e., a plurality), each
`optimized for a particular identified SNR that will perform better at that
`particular SNR than the other constellations, which have not been optimized
`at that particular SNR. Patent Owner argues that these constellations can
`then be orthogonalized into QAM-64 constellations, providing the same
`capacity benefits. Id. at 26–28, 44–45.
`Petitioner does not contest that Barsoum includes any of the above
`disclosure. Rather, this same disclosure of orthogonalizing a PAM-8 into a
`QAM-64 is relied on by Petitioner for teaching many of the features of claim
`1. See e.g., Pet. 43–45, 47–51.
`Claim 1 introduces the “plurality of different non-uniform
`multidimensional symbol constellations.” Petitioner’s declarant explains that
`Barsoum “discloses that the selected geometrically shaped (i.e., unequally
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`spaced or non-uniform) constellations may be selected from a plurality of
`geometric constellations. Ex. 1003 ¶ 132 (citing Barsoum (Ex. 1015), 2:56–
`58, 5:54–6:4, 7:8–10, 8:7–15, 8:47–54, 12:12–16; 3:61–64, 4:5–21, FIGs.
`11a, 11b, 13a, 13b, 15a, 15b, 17a, 17b). Petitioner’s declarant continues,
`“the constellations of FIG. 11b, 13b, 15b, 17b are one dimensional PAM
`constellations. However, [Barsoum] explains that one dimensional geometric
`PAM constellations can be optimized into multidimensional QAM
`constellations.” Id. ¶ 135 (citing Barsoum, 3:11–19; 4:29–31; 12:12–16;
`12:38–49). Petitioner’s declarant states: “a POSITA would have understood
`that the geometric (i.e., non-uniform) one dimensional constellations of FIG.
`11b having the same number of constellation points (i.e., 4) would have been
`capable of being optimized into four respective geometric (i.e., non-uniform)
`multidimensional constellations and then one selected therefrom for use by
`the receiver 16.” Id. ¶ 138 (citing Barsoum, 2:56–58, 5:54–6:4, 7:8–10, 8:7–
`15, 8:47–54, 12:12–16; 3:61–64, 4:5–21, FIGs. 11a, 11b, 13a, 13b, 15a, 15b,
`17a, 17b).
`The Petition advances these positions by its declarant, essentially
`word for word. Pet. 43–45, 47–48. We determine that each of these
`statements by Petitioner’s declarant and Petitioner, supported by the
`teachings of Barsoum, are admissions as to the teachings of Barsoum and
`what one of skill in the art would understand Barsoum to either expressly or
`implicitly teach.
`Consistent with the above findings, Petitioner also admits that
`Barsoum “discloses optimized 1D symbol constellations used to create a 2D
`constellation” and that “the created QAM-64 is optimized on a ‘per
`dimension basis’ only.” Pet. Reply 10; see also Pet. Sur-reply 2–3. In fact,
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`the Petition, and Petitioner’s declarant, admit that Barsoum teaches that
`“though some non-uniform constellations do not have a greater capacity than
`other constellations maximized for dmin, the written description of the ’777
`patent explains how to optimize a nonuniform constellation so that it can
`be capable of having a greater capacity such as a greater parallel decoding
`capacity.” Pet. 16 (citing Barsoum, 6:13–22); Ex. 1003 ¶ 77. Patent Owner
`highlights this statement (PO Sur-reply 2–3), to which Petitioner does not
`respond (see Pet. Sur-reply).
`Petitioner does not directly address or contest Patent Owner’s position
`that one of skill in the art would understand that Barsoum provides written
`description support for: a plurality of different non-uniform
`multidimensional symbol constellations orthogonalized from an optimized
`PAM-8 (such as the PAM-8 constellations from one of Figures 11b, 13b,
`15b, 17b) into QAM-64 constellations provides a constellation “capable of
`providing a greater parallel decoding capacity at a specific SNR than the
`other symbol constellations in the plurality of multidimensional symbol
`constellations at the same SNR” as required by claim 5 and discussed above.
`See also PO Sur-reply 20–21 (citing Ex. 2025 ¶ 19) (Discussing the
`testimony of Patent Owner’s declarant that the increased capacity of the
`PAM-8 constellations continues in the QAM constellations on the per
`dimension basis); Pet. Sur-reply 3 (Petitioner agreeing that the constellations
`are optimized on a per dimension basis).
`Rather, Petitioner argues that QAMs can be further optimized, and
`thus, there exist constellations with potentially greater parallel decoding
`
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`IPR2023-00319
`Patent 10,693,700 B1
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`capacity.7,8 Pet. Reply 2–19; Pet. Sur-reply 2–4, 6–7. Petitioner argues that
`in order to have written description support, Barsoum must include
`disclosure of “further optimizing multidimensional constellations after
`forming them from orthogonalized 1D constellations.” Pet. Sur-reply 6. In
`other words, “a POSITA would have understood that SNR and parallel
`decoding optimizations of PAM constellations would involve amplitude
`and/or 1D spacing optimizations, whereas optimizations of QAM
`constellations [(as a whole)] would also involve phase considerations.” Pet.
`Reply 13 (citing Ex. 1029 ¶¶ 10, 33).
`Petitioner does not sufficiently explain why claim 5 requires this type
`of optimization, or why this would be required in order for Barsoum to
`provide written description support for the claim. Claim 5 does not expressly
`require optimization of phase considerations and Petitioner does not argue
`for a claim construction that would include such a requirement.
`When claim 5 specifies that “each of the plurality of different non-
`uniform multidimensional symbol constellations is capable of providing a
`greater parallel decoding capacity at a specific SNR than the other symbol
`constellations in the plurality,” it does not require the greatest parallel
`
`
`7 Barsoum’s disclosure of optimizing QAMs in multidimensions is discussed
`in the following section.
`8 Petitioner’s Reply and Sur-reply discuss Exhibit 1030 (Fuentes) to
`highlight the additional optimization possible for a QAM. Reply 7–8; Pet.
`Sur-reply 2–4. We note that Fuentes, which appears to be a university thesis,
`includes a date of June 2017 (Ex. 1030, 1) and therefore is not helpful to us
`in determining what one of skill in the art would understand at the time of
`invention of Barsoum which was filed on June 5, 2008 (Barsoum, code
`(22)). We also note that there does not appear to be any evidence of record
`to establish whether Fuentes was publicly available at the time of filing of
`the ’700 patent.
`
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`IPR2023-00319
`Patent 10,693,700 B1
`
`decoding capacity, or that the plurality be of all known multidimensional
`symbol constellations optimized to achieve the greatest capacity.
`It appears as though because Patent Owner is arguing that certain
`optimizations meet the claimed requirements, Petitioner is now arguing that
`all dimensions must be optimized because this results in the greatest
`capacity. However, Petitioner does not address why the greatest capacity
`possible is required by the claim and we see no reason to read this additional
`requirement into the claim.
`We find that the specific examples and teachings in Barsoum, as
`discussed above and identified by both parties, “sufficiently [] convey to a
`person of skill in the art that the patentee had possession of the claimed
`invention at the time of the application.” Lizardtech, 424 F.3d at 1345.
`In particular, we find that one of skill in the art would understand that
`Barsoum provides written description support for: a plurality of different
`non-uniform multidimensional symbol constellations orthogonalized from
`an optimized PAM-8 (such as the PAM-8 constellations from one of Figures
`11b, 13b, 15b, 17b) into QAM-64 constellations provides a constellation
`“capable of providing a greater parallel decoding capacity at a specific SNR
`than the other symbol constellations in the plurality of multidimensional
`symbol constellations at the same SNR” as required by claim 5 and
`discussed above.
`
`(2) Optimizing Over Each Degree of Freedom
`Patent Owner also argues that Barsoum teaches that “a
`multidimensional QAM constellation” can be “directly optimize[d] over
`each degree of freedom.” PO Resp. 25–26 (citing Ex. 1001, 13:2–11;
`Barsoum, 12:39–48).
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`IPR2023-00319
`Patent 10,693,700 B1
`
`
`Under the heading “N-Dimensional Constellation Optimization,”
`Barsoum states:
`Rather than designing constellations in 1-D (PAM for in-
`stance) and then extending to 2-D (QAM), it is possible to take
`direct advantage in the optimization step of the additional degree
`of freedom presented by an extra spatial dimension. In general it
`is possible to design N-dimensional constellations and associated
`labelings. The complexity of the optimization step grows expo-
`nentially in the number of dimensions as does the complexity of
`the resulting receiver de-mapper. Such constructions constitute
`embodiments of the invention and simply require more run-time
`to produce.
`Barsoum, 12:39–48.
`Petitioner argues that this disclosure “is devoid of any details for
`directly optimizing each degree of freedom” and admits to the complexity of
`the optimization. Reply 3 (citing Ex. 1001, 13:1–11). Petitioner further
`argues that the disclosure:
`fails to describe or explain whether the optimization is for uni-
`form or non-uniform multi-dimensional constellations, and
`whether there is any difference in optimizing the two types of
`constellations. Thus, such disclosure cannot be relied upon as
`written description support for feature [5], which is directed to
`“non-uniform multidimensional symbol constellations.”
`Id. (citing Ex. 1029 ¶¶ 6–7).
`Patent Owner responds, supported by its declarant, that Petitioner’s
`argument ignores the rest of Barsoum’s disclosure. PO Sur-reply 15–17; Ex.
`2025 ¶¶ 8–9. Patent Owner’s declarant explain