UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`VOLKSWAGEN GROUP OF AMERICA, INC.,
`Petitioner
`
`v.
`
`NEO WIRELESS LLC,
`Patent Owner
`____________________
`Case IPR2023-00426
`U.S. Patent No. 8,467,366
`____________________
`
`DECLARATION OF LEONARD J. CIMINI, JR., PH.D.
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`VWGoA EX1003
`U.S. Patent No. 8,467,366
`
`

`

`Declaration of Leonard J. Cimini, Jr.
`U.S. Patent No. 8,467,366
`
`VI.
`
`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1
`I.
`GROUNDS OF UNPATENTABILITY .......................................................... 3
`II.
`III. QUALIFICATIONS ........................................................................................ 5
`IV. MATERIALS CONSIDERED ........................................................................ 9
`V.
`LEGAL UNDERSTANDING .......................................................................11
`A. My Understanding of Claim Construction ..........................................11
`B. My Understanding of Obviousness .....................................................11
`C. My Understanding of a Person Having Ordinary Skill in the Art ......14
`THE ’366 PATENT .......................................................................................15
`A.
`Overview .............................................................................................15
`B.
`Prosecution History .............................................................................18
`C.
`IPR2021-01480 ...................................................................................19
`D.
`Level of Ordinary Skill in the Art .......................................................20
`E.
`Claim Construction..............................................................................21
`VII. BACKGROUND OF THE TECHNOLOGY ................................................23
`A. Multiple Access Techniques ...............................................................23
`B.
`Orthogonal Frequency-Division Multiplexing (OFDM) & Orthogonal
`Frequency-Division Multiple Access (OFDMA) ...............................25
`Guard Bands and Guard Periods .........................................................26
`C.
`Peak-to-Average Power Ratio (PAP, PAR, or PAPR) ........................27
`D.
`Reducing or Eliminating Signal Interference ......................................28
`E.
`VIII. GROUND 1: CLAIMS 1-4, 6-20, 22-24 WOULD HAVE BEEN OBVIOUS
`OVER JEONG AND SUZUKI .....................................................................30
`A.
`Jeong ....................................................................................................30
`B.
`Suzuki ..................................................................................................35
`C. Motivation to Combine .......................................................................39
`D.
`Independent Claim 1 ...........................................................................41
`1.
`Claim 1’s Preamble ...................................................................42
`- i -
`
`

`

`
`
`
`
`
`
`Declaration of Leonard J. Cimini, Jr.
`U.S. Patent No. 8,467,366
`
`
`2.
`Limitation 1.1 ............................................................................44
`Limitation 1.2 ............................................................................46
`3.
`Limitation 1.3 ............................................................................47
`4.
`Limitation 1.4 ............................................................................50
`5.
`Limitation 1.5 ............................................................................51
`6.
`Independent Claims 9, 17, and 22 .......................................................54
`E.
`Dependent Claims 2 and 10 ................................................................63
`F.
`G. Dependent Claims 3 and 11 ................................................................65
`H. Dependent Claims 4 and 20 ................................................................66
`I.
`Dependent Claims 6 and 18 ................................................................68
`J.
`Dependent Claims 7 and 19 ................................................................69
`K. Dependent Claim 8 ..............................................................................70
`L.
`Dependent Claims 12-14 .....................................................................71
`M. Dependent Claims 15 and 23 ..............................................................73
`N. Dependent Claims 16 and 24 ..............................................................74
`IX. GROUND 2: CLAIMS 2-3, 5, 10-11, AND 21 WOULD HAVE BEEN
`OBVIOUS OVER JEONG, SUZUKI, AND GIBSON. ...............................75
`A. Gibson..................................................................................................75
`B.
`Dependent Claims 2 and 10 ................................................................76
`C.
`Dependent Claims 3 and 11 ................................................................77
`D. Dependent Claims 5 and 21 ................................................................79
`X. GROUND 3: CLAIMS 1, 4, 6-9, 12, 15-20, AND 22-24 WOULD HAVE
`BEEN OBVIOUS OVER THE COMBINATION OF KOO, 802.16AB,
`CHAYAT, AND SUZUKI. ...........................................................................83
`A. Koo ......................................................................................................83
`B.
`IEEE 802.16ab-01/01r2 (“802.16ab”) .................................................86
`C.
`Chayat ..................................................................................................96
`D.
`Suzuki ..................................................................................................97
`E. Motivation to Combine .......................................................................97
`
`
`
`
`- ii -
`
`

`

`Declaration of Leonard J. Cimini, Jr.
`U.S. Patent No. 8,467,366
`
`F.
`
`
`
`
`
`
`
`
`1.
`Koo with 802.16ab ....................................................................97
`Koo and 802.16ab with Chayat .................................................98
`2.
`Koo, 802.16ab, and Chayat with Suzuki ................................100
`3.
`Independent Claim 1 .........................................................................101
`1.
`Claim 1’s Preamble .................................................................101
`2.
`Limitation 1.1 ..........................................................................104
`3.
`Limitation 1.2 ..........................................................................107
`4.
`Limitation 1.3 ..........................................................................108
`5.
`Limitation 1.4 ..........................................................................111
`6.
`Limitation 1.5 ..........................................................................112
`Independent Claims 9, 17, and 22 .....................................................115
`G.
`H. Dependent Claims 4 and 20 ..............................................................119
`I.
`Dependent Claims 6 and 18 ..............................................................120
`J.
`Dependent Claims 7 and 19 ..............................................................121
`K. Dependent Claim 8 ............................................................................122
`L.
`Dependent Claim 12 ..........................................................................122
`M. Dependent Claims 15 and 23 ............................................................123
`N. Dependent Claims 16 and 24 ............................................................124
`XI. GROUND 4: CLAIMS 2-3, 5, 10-11, 13-14, AND 21 WOULD HAVE
`BEEN OBVIOUS OVER THE COMBINATION OF KOO, 802.16AB,
`CHAYAT, SUZUKI, AND GIBSON. ........................................................126
`A. Dependent Claims 2 and 10 ..............................................................126
`B.
`Dependent Claims 5 and 21 ..............................................................128
`C.
`Dependent Claims 13 and 14 ............................................................129
`XII. CONCLUSION ............................................................................................131
`
`
`
`
`
`
`
`- iii -
`
`

`

`
`
`
`
`
`
`I.
`
`
`
`Declaration of Leonard J. Cimini, Jr.
`U.S. Patent No. 8,467,366
`
`
`I, Leonard J. Cimini, Jr., declare as follows:
`INTRODUCTION
`I have been retained by Sterne, Kessler, Goldstein & Fox, P.L.L.C.,
`1.
`
`on behalf of Volkswagen Group of America (“VWGoA” and/or “Petitioner”) for
`
`the above-captioned inter partes review proceeding. I understand that this
`
`proceeding involves U.S. Patent No. 8,467,366 (EX1001, “the ’366 patent”), which
`
`is titled “Methods and apparatus for random access in multi-carrier communication
`
`systems,” and that the ’366 patent is currently assigned to Neo Wireless LLC
`
`(“Patent Owner”).
`
`2.
`
`I have been retained as a technical expert by VWGoA to study and
`
`provide my opinions on the technology claimed in, and the patentability or
`
`unpatentability of, claims 1-24 of the ’366 patent (“the challenged claims”). This
`
`declaration is directed to the challenged claims of the ’366 patent, and sets forth
`
`the opinions I have formed, the conclusions I have reached, and the bases for each.
`
`For purposes of this declaration, I was not asked to provide any opinions that are
`
`not expressed herein.
`
`3.
`
`I am familiar with the technology described in the ’366 patent as of its
`
`earliest possible priority date of March 9, 2004. I have been asked to provide my
`
`technical review, analysis, insights, and opinions regarding the ’366 patent. I have
`
`used this experience and insight along with the references identified herein as the
`
`
`
`- 1 -
`
`

`

`
`
`
`
`
`
`
`basis for my opinions that support the grounds of unpatentability set forth in the
`
`Declaration of Leonard J. Cimini, Jr.
`U.S. Patent No. 8,467,366
`
`Petition for Inter Partes Review of the ’366 patent.
`
`4.
`
`I have reviewed and am familiar with the specification of the ’366
`
`patent, which issued on June 18, 2013. I understand that the ’366 patent has been
`
`provided as EX1001. I will cite to the specification using the following formats:
`
`EX1001, ’366 patent, 1:1-10 (long form) and EX1001, 1:1-10 (short form). These
`
`example citations both point to the ’366 patent specification at column 1, lines 1-
`
`10.
`
`5.
`
`I am being compensated by VWGoA at my standard hourly rate for
`
`the time I spend in connection with this proceeding. My compensation is not
`
`dependent in any way on the substance of my opinions or on the outcome of this
`
`proceeding.
`
`
`
`
`
`
`
`- 2 -
`
`

`

`
`
`
`
`
`
`Declaration of Leonard J. Cimini, Jr.
`U.S. Patent No. 8,467,366
`
`
`II. GROUNDS OF UNPATENTABILITY
`In forming my opinions about the ’366 patent, I have considered the
`6.
`
`following grounds of unpatentability. Based on my review of the prior art
`
`references that form the basis of these grounds, it is my opinion that claims 1-24 of
`
`the ’366 patent would have been obvious to a person of ordinary skill in the art
`
`(“POSA”) as of March 9, 2004. I have not formed an opinion as to whether the
`
`claims of the ’366 patent are entitled to the March 9, 2004 priority date, but I
`
`reserve the right to do so in the future, if necessary. For the purposes of my
`
`opinions and analysis herein, I have been asked to treat March 9, 2004, as the time
`
`of the invention of the challenged claims.
`
`Ground Basis Claims
`§ 103 1-4, 6-20, 22-24
`1
`2
`§ 103 2-3, 5, 10-11, 21
`3
`§ 103 1, 4, 6-9, 12, 15-20, 22-
`24
`§ 103 2-3, 5, 10-11, 13-14, 21 Koo, 802.16ab, Chayat, Suzuki, &
`Gibson
`
`4
`
`
`
`References
`Jeong & Suzuki
`Jeong, Suzuki, & Gibson
`Koo, 802.16ab, Chayat, & Suzuki
`
`7.
`
`I have been asked to consider how a POSA would have understood
`
`the challenged claims in light of the disclosures of the ’366 patent. I also have been
`
`asked to consider how a POSA would have understood the prior art references
`
`Jeong, Suzuki, Gibson, Koo, 802.16ab, and Chayat. Further, I have been asked to
`
`consider and provide my technical review, analysis, insights, and opinions
`
`
`
`- 3 -
`
`

`

`
`
`
`
`
`
`
`regarding whether a POSA would have understood that the combinations of the
`
`Declaration of Leonard J. Cimini, Jr.
`U.S. Patent No. 8,467,366
`
`prior art references listed in the table above render obvious claims 1-24 of the ’366
`
`patent.
`
`
`
`
`
`
`
`- 4 -
`
`

`

`
`
`
`
`
`
`Declaration of Leonard J. Cimini, Jr.
`U.S. Patent No. 8,467,366
`
`
`
`III. QUALIFICATIONS
`In formulating my opinions, I have relied upon my training,
`8.
`
`knowledge, and experience in the relevant art. I have over 40 years of academic
`
`and industry experience in wireless technologies and standards, various
`
`communications technologies, networking, orthogonal frequency-division
`
`multiplexing (OFDM), and physical and media access control (MAC) layer
`
`technology. Over my career, among other activities, I have worked with companies
`
`(including Fortune 500 companies) to enable the high-date-rate wireless
`
`communication systems and networks that we have today. I have published over 70
`
`journal articles and over 120 conference papers. I also am a named inventor on 29
`
`patents.
`
`9. My academic background in electrical engineering provides a
`
`technical foundation for work in transmission of data in telecommunication
`
`systems. I received a Bachelor of Science degree in Electrical Engineering from
`
`the University of Pennsylvania in 1978. A year later, I received a Master of
`
`Science degree in Electrical Engineering from the University of Pennsylvania. In
`
`1982, I received the Doctor of Philosophy (Ph.D.) degree in Electrical Engineering,
`
`also from the University of Pennsylvania.
`
`10. After receiving my Ph.D. in 1982, I began working for AT&T Bell
`
`Laboratories, in West Long Branch, as a Member of Technical Staff. I continued to
`
`
`
`- 5 -
`
`

`

`
`
`
`
`
`
`
`work at this branch of AT&T Bell Laboratories until 1985. In my role as a Member
`
`Declaration of Leonard J. Cimini, Jr.
`U.S. Patent No. 8,467,366
`
`of Technical Staff, I proposed and analyzed speech privacy techniques for cellular
`
`mobile radio systems. I further designed and demonstrated 10- and 18-GHz
`
`hardware for a personal communication system. I also proposed and analyzed the
`
`use of OFDM in mobile radio systems. My proposal at that time was the first
`
`application of OFDM to wireless systems. This has become the basis for much of
`
`the current, widespread use of OFDM today.
`
`11. After that, I continued to work as a Member of Technical Staff at
`
`AT&T Bell Laboratories, but at a different branch. I held this position from 1985
`
`to 1996. During this time, I invented and analyzed new algorithms for dynamic
`
`channel selection in wireless communication systems, among other things. I also
`
`proposed and analyzed the use of multicarrier techniques to overcome the
`
`limitations to high-bit-rate wireless transmission caused by multipath. Further, I
`
`invented, analyzed, designed, and built a 20-Mbps packet-based wireless modem
`
`using clustered OFDM. During this phase of my career, I also devised techniques
`
`for providing reliable transmission for both light-wave (i.e., fiber), and wireless
`
`communication systems.
`
`12. From 1996 to 2002, I was a Technology Consultant (the next level on
`
`the AT&T employee technology ladder) for AT&T Laboratories Research. During
`
`this time, I studied the effect of channel mismatch on adaptive modulation for
`
`
`
`- 6 -
`
`

`

`
`
`
`
`
`
`
`OFDM for wireless applications. I also invented and analyzed techniques for
`
`Declaration of Leonard J. Cimini, Jr.
`U.S. Patent No. 8,467,366
`
`robust channel estimation and peak power reduction in OFDM. Further, I invented
`
`and analyzed solutions to both the physical layer and MAC layer challenges for
`
`providing high-bit-rate packet data to wide-area cellular users, using OFDM.
`
`13. Since 2002, I have been a Professor at the University of Delaware. I
`
`teach undergraduate courses in linear systems, probability, and communications. I
`
`also teach graduate courses in digital and wireless communications, and I research
`
`topics such as OFDM and multiuser networks.
`
`14.
`
`I have authored or co-authored more than 190 scientific and industry
`
`publications relating to various communications technologies, networking, and
`
`OFDM. I have also presented numerous tutorials and short courses to industry and
`
`academic audiences on these topics. I am listed as an inventor on over 20 patents
`
`that relate to these topics.
`
`15. Since receiving my Ph.D. in 1982, I was awarded nine of the
`
`industry’s most prestigious honors and awards. These awards include the 2010
`
`Innovator’s Award from the New Jersey Inventors Hall of Fame for innovative
`
`research related to high-speed wireless communications. I also received the 2007
`
`James Evans Avant Garde Award from the IEEE Vehicular Technology Society in
`
`recognition of my pioneering contributions to high-data-rate wireless
`
`communications, and the Stephen O. Rice Prize in the Field of Communications
`
`
`
`- 7 -
`
`

`

`
`
`
`
`
`
`
`Theory for a 2009 paper in the IEEE Transactions on Communications. In 2010, I
`
`Declaration of Leonard J. Cimini, Jr.
`U.S. Patent No. 8,467,366
`
`won the IEEE Communications Society’s Wireless Communications Technical
`
`Committee Recognition Award for having a high degree of visibility and
`
`contribution in the field of Wireless and Mobile Communications Theory,
`
`Systems, and Networks. In 2000, I became a Fellow of the IEEE for my
`
`contributions to the theory of high-speed wireless communications. More recently,
`
`I have received a number of other awards, including the Career Technical
`
`Achievement Award from the Communication Theory Committee of the IEEE
`
`Communications Society for contributions to OFDM for wireless communication.
`
`16. A copy of my curriculum vitae is provided as EX1004, which
`
`contains further details on my experience, technical expertise, and other
`
`qualifications.
`
`
`
`
`
`
`
`- 8 -
`
`

`

`
`
`
`
`
`
`Declaration of Leonard J. Cimini, Jr.
`U.S. Patent No. 8,467,366
`
`
`
`IV. MATERIALS CONSIDERED
`17. In formulating my opinions, I have relied upon my training,
`
`knowledge, and experience that are relevant to the ’366 patent. Furthermore, I
`
`have considered specifically the following documents listed below in addition to
`
`any other documents cited in this declaration:
`
`Exhibit No.
`1001
`1002
`1007
`
`Description
`U.S. Patent No. 8,467,366 B2 to Li et al. (“the ’366 patent”)
`
`Prosecution History of U.S. Patent No. 8,467,366 B2
`
`KR 2003-0058589 A to Jeong et al.
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1016
`
`1018
`
`Certified translation of KR 2003-0058589 A to Jeong et al.
`(“Jeong”)
`U.S. Patent No. 5,903,614 to Suzuki et al. (“Suzuki”)
`Jerry D. Gibson, “The Mobile Communications Handbook,” 2nd
`Edition, CRC Press LLC, 1999 (“Gibson”)
`U.S. Pub. No. 2003/0198179 A1 to Koo et al. (“Koo”)
`Air Interface for Fixed Broadband Wireless Access Systems, Part
`A: Systems between 2 and 11 GHz, IEEE 802.16ab-01/01r2, July
`2001 (“802.16ab”)
`WO 03/075500 A2 to Chayat et al. (“Chayat”)
`October 26, 2001 Letter from Chairman of ETSI Project
`Broadband Radio Access Networks, Jamshid Khun-Hush, Dr.-Ing.,
`to Dr. Roger B. Marks, Chair IEEE 802.16 Working Group on
`Broadband Wireless Access
`
`Cimini, “Analysis and Simulation of a Digital Mobile Channel
`Using Orthogonal Frequency Division Multiplexing,” IEEE Trans.
`Comm., Vol. 33, No. 7, July 1985.
`
`
`
`- 9 -
`
`

`

`
`
`
`
`
`
`Exhibit No.
`1019
`
`Declaration of Leonard J. Cimini, Jr.
`U.S. Patent No. 8,467,366
`
`
`
`Description
`U.S. Patent No. 3,488,445 to Chang
`
`1020
`
`1021
`
`1022
`1023
`
`1028
`
`Dell Inc. v. Neo Wireless LLC, IPR2021-01480, Paper 11
`(P.T.A.B. March 16, 2022).
`
`Defendant’s Proposed Interpretations, In Re Neo Wireless, LLC
`Patent Litigation, 2:22-MD-03034-TGB, December 30, 2022.
`
`U.S. Patent No. 6,556,557 to Cimini, Jr. et al.
`
`U.S. Patent No. 6,928,084 to Cimini, Jr. et al.
`
`Plaintiff Neo Wireless LLC’s Disclosure Of Proposed
`Interpretations And Evidence Of Disputed Claim Terms, In Re
`Neo Wireless, LLC Patent Litigation, 2:22-MD-03034-TGB,
`December 30, 2022.
`
`18. To the best of my knowledge, the above-mentioned documents and
`
`materials are true and accurate copies of what they purport to be. An expert in the
`
`field would reasonably rely on them to formulate opinions such as those set forth
`
`in this declaration.
`
`19. Exhibit 1018 is a true and accurate copy of the 1985 article, “Analysis
`
`and Simulation of a Digital Mobile Channel Using Orthogonal Frequency
`
`Division Multiplexing,” that I authored.
`
`20. I have also relied upon various legal principles (as explained to me by
`
`VWGoA’s counsel) in formulating my opinions. My understanding of these
`
`principles is summarized below.
`
`
`
`- 10 -
`
`
`
`
`
`
`
`

`

`
`
`
`
`
`
`Declaration of Leonard J. Cimini, Jr.
`U.S. Patent No. 8,467,366
`
`
`
`V. LEGAL UNDERSTANDING
`A. My Understanding of Claim Construction
`I understand that during an inter partes review proceeding, claims are
`21.
`
`to be construed in light of the specification as would be read by a person of
`
`ordinary skill in the relevant art at the time the application was filed. I understand
`
`that claim terms are given their ordinary and customary meaning as would be
`
`understood by a person of ordinary skill in the relevant art in the context of the
`
`entire disclosure. A claim term, however, will not receive its ordinary meaning if
`
`the patentee acted as his own lexicographer and clearly set forth a definition of the
`
`claim term in the specification. In this case, the claim term will receive the
`
`definition set forth in the patent.
`
`B. My Understanding of Obviousness
`I understand that a patent claim is invalid if the claimed invention
`22.
`
`would have been obvious to a person of ordinary skill in the art at the time the
`
`application was filed. I understand that this means that even if all of the
`
`requirements of the claim cannot be found in a single prior art reference that would
`
`anticipate the claim, the claim can still be invalid.
`
`23. To obtain a patent, a claimed invention must have been, as of its
`
`priority date, nonobvious in view of the prior art in the field. I understand that a
`
`patent claim is obvious when the differences between the subject matter sought to
`
`
`
`- 11 -
`
`

`

`
`
`
`
`
`
`
`be patented and the prior art are such that the subject matter as a whole would have
`
`Declaration of Leonard J. Cimini, Jr.
`U.S. Patent No. 8,467,366
`
`been obvious at the time the invention was made to a person having ordinary skill
`
`in the art.
`
`24.
`
`I understand that to prove that prior art or a combination of prior art
`
`renders a patent obvious, it is necessary to: (1) identify the particular references
`
`that, singly or in combination, render the patent obvious; (2) specifically identify
`
`which elements of the patent claim appear in each of the asserted references; and
`
`(3) explain how the prior art references could have been combined in order to
`
`create the inventions claimed in the asserted claim.
`
`25.
`
`I also understand that prior art references can be combined under
`
`several different circumstances. For example, it is my understanding that one such
`
`circumstance is when a proposed combination of prior art references results in a
`
`system that represents a predictable variation, which is achieved using prior art
`
`elements according to their established functions.
`
`26.
`
`I also understand that when considering the obviousness of a patent
`
`claim, one should consider whether a teaching, suggestion, or motivation to
`
`combine the references exists so as to avoid impermissibly applying hindsight
`
`when considering the prior art. I understand this test should not be rigidly applied,
`
`but that the test can be important to avoiding such hindsight.
`
`27.
`
`I understand that certain objective indicia can be important evidence
`
`
`
`- 12 -
`
`

`

`
`
`
`
`
`
`
`as to whether a patent is obvious or nonobvious. Such indicia include:
`
`Declaration of Leonard J. Cimini, Jr.
`U.S. Patent No. 8,467,366
`
`(1) commercial success of products covered by the patent claims; (2) a long-felt
`
`need for the invention; (3) failed attempts by others to make the invention;
`
`(4) copying of the invention by others in the field; (5) unexpected results achieved
`
`by the invention as compared to the closest prior art; (6) praise of the invention by
`
`the infringer or others in the field; (7) the taking of licenses under the patent by
`
`others; (8) expressions of surprise by experts and those skilled in the art at the
`
`making of the invention; and (9) the patentee proceeded contrary to the accepted
`
`wisdom of the prior art. At this point, I am not aware of any secondary indicia of
`
`non-obviousness. But I reserve the right to review and opine on any evidence of
`
`objective indicia of nonobvious that may be presented during this proceeding.
`
`28.
`
`I also understand that “obviousness” is a legal conclusion based on the
`
`underlying factual issues of the scope and content of the prior art, the differences
`
`between the claimed invention and the prior art, the level of ordinary skill in the
`
`pertinent art, and any objective indicia of non-obviousness. For that reason, I am
`
`not rendering a legal opinion on the ultimate legal question of obviousness. Rather,
`
`my testimony addresses the underlying facts and factual analysis that would
`
`support a legal conclusion of obviousness or non-obviousness, and when I use the
`
`term obvious, I am referring to the perspective of one of ordinary skill at the time
`
`of invention.
`
`
`
`- 13 -
`
`

`

`
`
`
`
`
`
`Declaration of Leonard J. Cimini, Jr.
`U.S. Patent No. 8,467,366
`
`
`C. My Understanding of a Person Having Ordinary Skill in the Art
`29. I understand that a person of ordinary skill in the relevant art (herein
`
`“POSA”) is presumed to be aware of all pertinent art, thinks along conventional
`
`wisdom in the art, and is a person of ordinary creativity—not an automaton.
`
`30. I have been asked to consider the level of ordinary skill in the field
`
`that someone would have had at the time the claimed invention was made. In
`
`deciding the level of ordinary skill, I considered the following:
`
`• the levels of education and experience of persons working in the
`
`field;
`
`• the types of problems encountered in the field; and
`
`• the sophistication of the technology.
`
`31. My opinion below explains how a POSA would have understood the
`
`technology described in the references I have identified herein around the March
`
`9, 2004 timeframe.
`
`32. Regardless if I use “I” or a “POSA” during my technical analysis
`
`below, all of my statements and opinions are always to be understood to be based
`
`on how a POSA would have understood or read a document at the time of the
`
`invention.
`
`
`
`
`
`
`
`- 14 -
`
`

`

`
`
`
`
`
`
`Declaration of Leonard J. Cimini, Jr.
`U.S. Patent No. 8,467,366
`
`
`
`VI. THE ’366 PATENT
`A. Overview
`33. The ’366 patent is titled “Methods and Apparatus for Random Access
`
`in Multi-Carrier Communication Systems,” EX1001, (54), and is directed to
`
`ranging in a multi-cell orthogonal frequency division multiple access (OFDMA)
`
`wireless communication system, EX1001, 1:24-55. The specification describes a
`
`wireless communication system that uses technologies that were well-known by
`
`March 2004, such as: random access and ranging; multi-carrier signals made up of
`
`subcarriers, including subcarriers used as guard bands; a typical cellular structure;
`
`and the use of sequences that, when modulated via OFDM, exhibit low peak-to-
`
`average power ratio (often abbreviated “PAP,” “PAPR,” or “PAR”), such as
`
`Hadamard sequences. The ’366 patent acknowledges that some of these
`
`technologies (such as random access and ranging) were well-known but includes
`
`others in its Detailed Description without acknowledging that they were also well-
`
`known, widely studied, and routinely implemented technologies by March 2004.
`
`34.
`
`In the Background section, the ’366 patent admits that “random
`
`access” including “Ranging” was well-known. EX1001, 1:26-28. Indeed, the ’366
`
`patent describes ranging as a “critical part of [a] wireless communication system.”
`
`EX1001, 1:24-55. It admits that “a mobile station first needs to perform a random
`
`access for establishing communication with a base station” and that “random
`
`
`
`- 15 -
`
`

`

`
`
`
`
`
`
`
`access typically includes … Ranging.” EX1001, 1:24-27 (emphasis added).
`
`Declaration of Leonard J. Cimini, Jr.
`U.S. Patent No. 8,467,366
`
`“During Ranging, the mobile station sends a signal to the base station, so that the
`
`base station can identify the mobile station and measure the power and time delay
`
`of the mobile station, and inform the mobile station for power adjustment and time
`
`advance.” EX1001, 1:28-32. The ’366 patent further admits that “[t]he ranging
`
`process typically involves an exchange of messages between the base station and
`
`the mobile station by which the mobile station aligns itself with the start of each
`
`time slot after compensating for propagation delay and other factors.” EX1001,
`
`1:43-47.
`
`35.
`
`In the Detailed Description, the ’366 patent describes “a multi-carrier
`
`communication system such as … orthogonal frequency division multiple access
`
`(OFDMA) systems” in which “information data are multiplexed on subcarriers that
`
`are mutually orthogonal in the frequency domain.” EX1001, 2:47-51. Multi-carrier
`
`communication systems, including OFDMA communication systems, were well-
`
`known by March 2004. See, e.g., EX1008, 0002, Abstract; EX1009, 3:31-4:21,
`
`FIGS. 2A-2G; EX1012, 0077-79; EX1013, 1:5-32.
`
`36. The ’366 patent explains that “[a] basic structure of a multi-carrier
`
`signal in the frequency domain is made up of subcarriers” and that “[t]here are
`
`three types of subcarriers: 1. Data subcarriers, which carry information data; 2.
`
`Pilot subcarriers, whose phases and amplitudes are predetermined and made known
`
`
`
`- 16 -
`
`

`

`
`
`
`
`
`
`
`to all receivers and which are used for assisting system functions such as
`
`Declaration of Leonard J. Cimini, Jr.
`U.S. Patent No. 8,467,366
`
`estimation of system parameters; and 3. Silent subcarriers, which have no energy
`
`and are used for guard-bands and DC carriers.” EX1001, 2:61-3:4. This merely
`
`describes the well-known structure of a multi-carrier signal, as demonstrated by
`
`802.16ab’s frequency domain description in Section 8.3.5.1.3, explaining that an
`
`“OFDM symbol is made up from carriers” and “[t]here are several carrier types”
`
`including “Data carriers – for data transmission,” “Pilot carriers – for different
`
`estimation purposes,” and “Null carriers – [having] no transmission at all, for
`
`guard bands and DC carrier[s].” EX1012, 0175. The ’366 patent’s depiction of a
`
`multi-carrier signal in the frequency domain is also very similar to those in
`
`802.16ab. Compare EX1001, FIG. 1 with EX1012, FIGS. 214-215. I also note that
`
`the use of no energy or zero-power subcarriers as guard band was also well known.
`
`See, e.g., EX1009, 3:16-20.
`
`37. Turning to the claims, the ’366 patent claims a mobile station and
`
`corresponding method (claims 1-8, 17-21) and a base station and corresponding
`
`method (claims 9-16, 22-24) that use a “ranging signal” exhibiting a low PAPR in
`
`the time domain. See, e.g., EX1001, 7:21-22. The ranging signal is transmitted in a
`
`“ranging subchannel” comprising a block of subcarriers in which the power levels
`
`of the subcarriers at both ends of a block are set to zero, forming guard bands or
`
`intervals. See, e.g., EX1001, 7:13-15, 7:23-26. During prosecution, the Examiner
`
`
`
`- 17 -
`
`

`

`
`
`
`
`
`
`
`identified these two features (i.e., the low PAPR ranging signal and zero-power
`
`Declaration of Leonard J. Cimini, Jr.
`U.S. Patent No. 8,467,366
`
`subcarriers) when allowing the claims.
`
`Prosecution History
`B.
`38. The application that issued as the ’366 patent received a first action
`
`allowance, i.e., was allowed without receiving rejections. EX1002, 0120-28. The
`
`Examiner’s reason for allowance was that the prior art of record, particularly U.S.
`
`Pub. No. 2010/0111017 (“Um”), failed to disclose a ranging signal exhibiting low
`
`PAPR (limitation 1.4) and zero-power subcarriers at the ends of a subchannel
`
`block (limitation 1.5):
`
`The prior art of record Um does not