`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Xiaodong Li, et al.
`In re Patent of:
`
`10,965,512 Attorney Docket No.: 18768-0206IP1
`U.S. Patent No.:
`March 30, 2021
`
`Issue Date:
`Appl. Serial No.: 17/012,813
`
`Filing Date:
`September 4, 2020
`
`Title:
`METHOD AND APPARATUS USING CELL-SPECIFIC AND
`COMMON PILOT SUBCARRIERS IN MULTI-CARRIER,
`MULTI CELL WIRELESS COMMUNICATION NETWORKS
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`PETITION FOR INTER PARTES REVIEW OF
`UNITED STATES PATENT NO. 10,965,512
`PURSUANT TO 35 U.S.C. §§ 311–319, 37 C.F.R. § 42
`
`
`
`

`

`
`
`
`
`Petition for Inter Partes Review of
`U.S. Patent No. 10,965,512
`TABLE OF CONTENTS
`
`V. 
`
`I. 
`INTRODUCTION ............................................................................................... 1 
`II.  MANDATORY NOTICES ................................................................................. 2 
`A. 
`Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) ................................ 2 
`B. 
`Related Matters Under 37 C.F.R. § 42.8(b)(2) ......................................... 3 
`C. 
`Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) ..................... 5 
`D. 
`Service Information ................................................................................... 5 
`E. 
`PAYMENT OF FEES ............................................................................... 5 
`III.  GROUNDS FOR STANDING ............................................................................ 6 
`IV. 
`IDENTIFICATION OF CHALLENGE (37 C.F.R. §42.104(B)) ....................... 6 
`A. 
`Citation of Prior Art .................................................................................. 6 
`B. 
`Statutory Grounds for the Challenge ......................................................... 7 
`TECHNOLOGY OVERVIEW ............................................................................ 7 
`A.  OFDMA Systems Were Well Known ....................................................... 7 
`B. 
`Communicating Various Pilots Signals Between Base Stations and
`Mobile Stations Was Well-Known ........................................................... 8 
`OFDM/OFDMA Cellular Systems Implemented Pilot Symbols for
`Channel Estimation and Data Recovery ................................................... 9 
`Beamforming Was Well-Known ............................................................... 9 
`D. 
`VI.  THE ’512 PATENT ........................................................................................... 10 
`A. 
`Summary of the ’512 Patent .................................................................... 10 
`B. 
`Prosecution History Summary ................................................................. 12 
`C. 
`Level of Ordinary Skill in the Art ........................................................... 12 
`D. 
`Claim Construction .................................................................................. 13 
`VII.  OVERVIEW OF THE APPLIED REFERENCES ........................................... 13 
`A.  Kim .......................................................................................................... 13 
`B. 
`Ketchum .................................................................................................. 16 
`C. 
`Tong ......................................................................................................... 17 
`D. 
`Li .............................................................................................................. 18 
`E. 
`Smee ........................................................................................................ 18 
`- i -
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`C. 
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`

`

`B. 
`
`C. 
`
`Petition for Inter Partes Review of
`U.S. Patent No. 10,965,512
`VIII.  GROUNDS OF UNPATENTABILITY ............................................................ 18 
`A.  Ground 1: The combination of Kim and Tong renders obvious claims 1-
`30. ............................................................................................................ 19 
`Ground 2: The combination of Ketchum and Li renders obvious claims 1,
`3, 4, 6-8, 10, 11, 13-15, 17, 18, 20, 22, 23, 25, 26, 28, and 30 ............... 54 
`Ground 3: The Combination of Ketchum, Li, and Smee renders obvious
`claims 5, 12, 21, and 29 ........................................................................... 79 
`IX.  DISCRETIONARY CONSIDERATIONS UNDER 314(A) AND 325(D)
`FAVOR INSTITUTION. ................................................................................... 84 
`A.  General Plastic Factors ........................................................................... 84 
`B. 
`The Fintiv factors favor institution. ......................................................... 85 
`C. 
`Advanced Bionics favors institution. ....................................................... 87 
`CONCLUSION .................................................................................................. 88 
`
`X. 
`
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`
`
`Exhibit No.
`GM-1001
`GM-1002
`GM-1003
`
`GM-1004
`GM-1005
`
`GM-1006
`GM-1007
`GM-1008
`GM-1009
`
`GM-1010
`GM-1011
`GM-1012
`
`GM-1013
`GM-1014
`
`GM-1015
`GM-1016
`
`GM-1017
`
`GM-1018
`
`GM-1019
`
`GM-1020
`
`Petition for Inter Partes Review of
`U.S. Patent No. 10,965,512
`
`EXHIBITS
`
`Description
`U.S. Patent No. 10,965,512 to Li et al. (“’512 patent”)
`’512 Patent Prosecution History
`Declaration of Dr. Paul Min
`International Patent Publication No. WO2004/049618 to Kim et al.
`(“Kim”)
`U.S. Patent No. 7,120,395 to Tong et al. (“Tong”)
`U.S. Patent Application Pub. No. 2004/0179627 to Ketchum et al.
`(“Ketchum”)
`U.S. Patent Application Pub. No. 2002/0163879 to Li et al. (“Li”)
`U.S. Patent No. 7,248,559 to Ma et al. (“Ma ’559”)
`Tufvesson, et al., Pilot Assisted Channel Estimation For OFDM
`in Mobile Cellular Systems, IEEE 47th Vehicular Technology
`Conference (1997)
`U.S. Patent No. 7,826,471 to Wilson et al. (“Wilson”)
`U.S. Patent No. 7,664,533 to Logothetis et al. (“Logothetis”)
`U.S. Patent No. 7,054,664 to Nagaraj (“Nagaraj”)
`International Patent Application No. WO 2004/056022 to Lee et
`al. (“Lee”)
`U.S. Patent No. 7,551,546 to Ma (“Ma ’546”)
`Anderson, Fixed Broadband Wireless System Design, Wiley
`(2003) (excerpts)
`U.S. Patent No. 7,852,746 to Jalali (“Jalali”).
`U.S. Patent Application Pub. No. 2004/0131007 to Smee et al.
`(“Smee”)
`U.S. Patent No. 7,650,152 to Li et al. (“Li ’152”)
`
`U.S. Patent Application Pub. No. 2004/0190598 to Seki et al.
`(“Seki”).
`Li, “A Novel Broadband Wireless OFDMA Scheme for Downlink
`in Cellular Communications,” Samsung Advanced Institute of
`Technology (IEEE) (2003) (“Li-Samsung”)
`
`- iii -
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`

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`
`
`Petition for Inter Partes Review of
`U.S. Patent No. 10,965,512
`Hara et al., “Multicarrier Techniques for 4G Mobile
`Communications,” Artech House (2003) (excerpts) (“Hara”)
`U.S. Patent Application Pub. No. 2004/0228270 to Chen et al.
`(“Chen”)
`Van Nee et al., “OFDM for Wireless Multimedia
`Communications,” Artech House (2000) (“Van Nee”) (excerpts)
`Bahai et al., “Multi-Carrier Communications Theory and
`Applications of OFDM,” Springer Science (2004)
`(excerpts) (“Bahai”)
`U.S. Patent No. 7,039,001 to Krishnan et al. (Krishnan”)
`U.S. Patent No. 6,992,621 to Casas et al. (“Casas”)
`U.S. Patent No. 5,596,329 to Searle et al. (“Searle”)
`U.S. Patent Application Pub. No. 2005/0075125 to Bada et al.
`(“Bada”).
`Curriculum Vitae of Dr. Paul Min
`U.S. Provisional Patent Application No. 60/421,309 to Walton
`et al. (“’309 Provisional”)
`U.S. Patent No. 7,012,882 to Wang et al. (“Wang”)
`Transfer Order, In re: Neo Wireless, LLC, Patent Litigation,
`Case MDL No. 3034, issued June 14, 2022 (ECF No. 50)
`Docket Sheet, Neo Wireless, LLC v. Volkswagen Group of
`America, Inc., Case No. 2:22-cv-11404 (E.D. Mich.)
`United States District Courts – National Judicial Caseload
`Profile, June 2022
`Declaration of Dr. Matthew C. Valenti
`
`GM-1021
`
`GM-1022
`
`GM-1023
`
`GM-1024
`
`GM-1025
`GM-1026
`GM-1027
`GM-1028
`
`GM-1029
`GM-1030
`
`GM-1031
`GM-1032
`
`GM-1033
`
`GM-1034
`
`GM-1035
`
`- iv -
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`

`
`
`
`I.
`
`Petition for Inter Partes Review of
`U.S. Patent No. 10,965,512
`
`INTRODUCTION
`General Motors LLC, Nissan North America, Inc., Tesla, Inc., and
`
`American Honda Motor Co., Inc. (collectively “Petitioner”) requests inter partes
`
`review of claims 1-30 of U.S. Patent No. 10,965,512 to Li et al. (“the ʼ512
`
`patent”), titled “Method and apparatus using cell-specific and common pilot
`
`subcarriers in multi-carrier, multi cell wireless communication networks.”
`
`The ’512 patent claims techniques for communicating two types of pilot
`
`signals within wireless systems. The ’512 patent admits it was known to use pilot
`
`signals to perform “many important system functions.” EX1001, 1:36-43. The
`
`’512 patent’s only purported advancement was to use two types of pilot signals to
`
`perform such system functions. E.g., id.,3:10-36. But the claimed features were
`
`well-known and disclosed in various patents and industry publications prior to the
`
`earliest possible priority date of the ’512 patent. This Petition demonstrates each
`
`challenged claim is not patentable based on a small subset of these patents and
`
`publications, and is supported by a Declaration from Dr. Matthew C. Valenti.1
`
`
`1 Petitioner retained Matthew C. Valenti, Ph.D. in this proceeding. See EX1035. Dr.
`
`Valenti has adopted the opinions set forth in EX1003, declaration of Dr. Paul Min,
`
`Ph.D., submitted in IPR2022-01539, as his own. EX1035, ¶18. While Petitioner is not
`
`relying directly on Dr. Min’s declaration in this Petition, for expediency this Petition
`
`
`
`
`- 1 -
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`

`
`
`See EX1035, Valenti Declaration.
`
`Petition for Inter Partes Review of
`U.S. Patent No. 10,965,512
`
`The primary references presented herein include International Patent
`
`Publication No. WO2004/049618 to Kim et al. (“Kim”), which discloses
`
`orthogonal frequency division multiple access (OFDMA) downlink signals that
`
`include a “[pilot] pattern in common for each cell,” and a different pilot pattern
`
`that is “different for each cell.” EX1004, Kim, 6:23-7:10, 24:20-25:5. The prior
`
`art presented herein further includes U.S. Patent Application Pub. No.
`
`2004/0179627 to Ketchum et al. (“Ketchum”), which discloses cellular downlink
`
`signals that include “various types of pilot[s].” EX1006, Ketchum,¶11-13.
`
`Kim and Ketchum used in various combinations teach the limitations in the
`
`challenged claims of the ’512 patent. Unfortunately however, neither Kim nor
`
`Ketchum—nor any of the other prior-art references relied on herein—were
`
`previously before the Office. If they had been, the ’512 patent would not have
`
`been allowed. Accordingly, the Board should institute this proceeding and find
`
`claims 1- 30 of the ’512 patent unpatentable.
`
`II. MANDATORY NOTICES
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`General Motors LLC, Nissan North America, Inc., Tesla, Inc., and
`
`American Honda Motor Co., Inc., collectively “Petitioners,” along with General
`
`
`cites only to Dr. Min’s declaration. EX1003 (IPR2022-01539).
`
`
`
`- 2 -
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`

`
`
`Petition for Inter Partes Review of
`U.S. Patent No. 10,965,512
`Motors Company and LG Electronics, Inc. (as to General Motors LLC), Nissan
`
`Motor Acceptance Corporation a/k/a Nissan Motor Acceptance Company LLC,
`
`Quectel Wireless Solutions Co. Ltd., and Honda Development & Manufacturing
`
`of America, LLC are the real parties-in-interest.
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`The ’512 patent is the subject of the following civil actions: Neo Wireless,
`
`LLC v. Ford Motor Company, Case No. 4-22-cv-00210 (W.D. Mo.), filed March
`
`29, 2022; Neo Wireless, LLC v. Nissan North America Inc. et al., Case No. 3-22-
`
`cv-00220 (M.D. Tenn.), filed March 29, 2022; Neo Wireless, LLC v. American
`
`Honda Motor Co., Inc. et al., Case No. 2-22-cv-01824 (S.D. Ohio), filed March
`
`29, 2022; Neo Wireless LLC v. Tesla, Inc., Case No. 2- 22-cv-00095 (E.D. Tex.),
`
`filed March 29, 2022; Neo Wireless LLC v. General Motors Company et al., Case
`
`No. 2-22-cv-00094 (E.D. Tex.), filed March 29, 2022; Neo Wireless LLC v.
`
`Toyota Motor North America, Inc. et al., Case No. 2- 22-cv-00093 (E.D. Tex.),
`
`filed March 29, 2022; Neo Wireless, LLC v. Volkswagen Group of America, Inc.
`
`et al. (TV2), Case No. 1-22-cv-00076 (E.D. Tenn.), filed March 29, 2022; Neo
`
`Wireless, LLC v. Volkswagen Group of America, Inc. et al., Case No. 2-22-cv-
`
`11404 (E.D. Mich.), filed June 28, 2022; Neo Wireless LLC v. Toyota Motor
`
`North America, Inc. et al., Case No. 2-22-cv-11406 (E.D. Mich.), filed June 28,
`
`2022; Neo Wireless LLC v. General Motors Company et al., Case No. 2-22-cv-
`
`11407 (E.D. Mich.), filed June 28, 2022; Neo Wireless LLC v. Tesla, Inc., Case
`- 3 -
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`

`

`
`
`Petition for Inter Partes Review of
`U.S. Patent No. 10,965,512
`No. 2-22-cv-11408 (E.D. Mich.), filed June 28, 2022; Neo Wireless, LLC v.
`
`Nissan North America Inc. et al., Case No. 2-22-cv-11405 (E.D. Mich.), filed
`
`June 29, 2022; Neo Wireless, LLC v. American Honda Motor Co., Inc. et al.,
`
`Case No. 2-22-cv-11403 (E.D. Mich.), filed June 27, 2022; Neo Wireless, LLC v.
`
`Ford Motor Company, Case No. 2-22-cv-11402 (E.D. Mich.), filed June 27, 2022;
`
`In re: Neo Wireless, LLC Patent Litigation, Case No. 2-22-md-03034 (E.D.
`
`Mich.), filed June 23, 2022; Neo Wireless, LLC v. Mercedes-Benz USA, LLC,
`
`Case No. 3-22-cv-00780 (M.D. Fla.), filed July 15, 2022; Neo Wireless, LLC v.
`
`Mercedes-Benz USA, LLC, Case No. 2-22-cv-11769 (E.D. Mich.), filed August
`
`2, 2022; Neo Wireless, LLC v. FCA US LLC, Case No. 3-22-cv-01252 (N.D.
`
`Ohio), filed July 15, 2022; and Neo Wireless, LLC v. FCA US LLC, Case No. 2-
`
`22-cv- 11770 (E.D. Mich.), filed August 2, 2022.
`
`Volkswagen Group of America, Inc. filed an IPR Petition (IPR2022-01539)
`
`against the ’512 patent that resulted in institution of IPR via an Institution
`
`Decision dated May 2, 2023. Petitioner is concurrently filing a motion to join
`
`IPR2022-01539. Ford Motor Company filed an IPR Petition (IPR2023-00764)
`
`against the ’512 patent on March 28, 2023, which is awaiting a decision on
`
`institution. Mercedes-Benz USA, LLC filed an IPR Petition (IPR2023-00079)
`
`against the ’512 patent on October 19, 2022 that resulted in institution of IPR and
`
`joinder with IPR2022-01539 on May 5, 2023.
`
`.
`
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`

`
`
`Petition for Inter Partes Review of
`U.S. Patent No. 10,965,512
`C. Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
`Petitioner provides the following designation of counsel.
`
`
`Lead Counsel
`Timothy W. Riffe, Reg. No. 43,881
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`Tel: 202-783-5070
`Fax: 877-769-7945
`Email:IPR18768-0206IP1@fr.com
`
`Backup counsel
`Usman A. Khan, Reg. No. 70,439
`John T. Johnson, Reg. No. 37,363
`Jeffrey C. Mok, Reg. No. 69,878
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`Tel: 202-783-5070
`Fax: 877-769-7945
`PTABInbound@fr.com
`
`Reginald J. Hill, Reg. No. 39,225
`Nicole A. Keenan, Reg. No. 48,622
`JENNER & BLOCK LLP
`353 N. Clark Street
`Chicago, IL 60654
`Phone: (312) 923-2606
`Fax: (312) 527-0484
`rhill@jenner.com
`nkeenan@jenner.com
`
`D.
`Service Information
`Please address all correspondence and service to the address listed above.
`
`Petitioner consents to electronic service by email at IPR18768-0206IP1@fr.com
`
`(referencing No. 18768-0206IP1 and cc’ing PTABInbound@fr.com, rhill@jenner.com,
`
`and nkeenan@jenner.com).
`
`E.
`PAYMENT OF FEES
`Petitioner authorizes the PTO to charge Deposit Account No. 06-1050 for the fee
`
`set forth in 37 C.F.R. § 42.15(a) for this Petition and further authorizes payment for
`
`
`
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`

`
`
`Petition for Inter Partes Review of
`U.S. Patent No. 10,965,512
`any additional fees to be charged to this Deposit Account.
`
`III. GROUNDS FOR STANDING
`Under 37 C.F.R. § 42.104(a), Petitioner and undersigned certify that the ’512
`
`patent is available for IPR. Petitioner is not barred or estopped from requesting IPR on
`
`the grounds herein.
`
`IV.
`
`IDENTIFICATION OF CHALLENGE (37 C.F.R. §42.104(B))
`A. Citation of Prior Art
`The ’512 patent’s earliest possible priority date is January 29, 2004.
`
`EX1001, (60). Without conceding this is correct, all references relied upon
`
`herein are prior art as of January 29, 2004.
`
`Kim (EX1004) was filed November 29, 2002 and published June 10, 2004.
`
`Kim designated the United States, and was published in English. EX1004, (26),
`
`(81). Therefore, Kim is prior art at least under 35 U.S.C. §102(e).
`
`U.S. Patent No. 7,120,395 to Tong et al. (EX1005) was filed October 20,
`
`2003 and issued October 10, 2006. Therefore, Tong is prior art at least under 35
`
`U.S.C. §102(e).
`
`Ketchum (EX1006) was filed June 30, 2003 and published September 16,
`
`2004. Therefore, Ketchum is prior art at least under 35 U.S.C. §102(e).
`
`U.S. Patent Application Pub. No. 2002/0163879 to Li et al. (EX1007)
`
`published November 7, 2002. Therefore, Li is prior art at least under 35 U.S.C.
`
`§102(b).
`
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`
`
`Petition for Inter Partes Review of
`U.S. Patent No. 10,965,512
`U.S. Patent Application Pub. No. 2004/0131007 to Smee et al. (EX1017)
`
`was filed February 7, 2003 and published July 8, 2004. Therefore, Smee is prior
`
`art at least under 35 U.S.C. §102(e).
`
`B.
`
`Statutory Grounds for the Challenge
`
`
`
`Ground Basis Claims
`1.
`§103
`1-30
`2.
`§103
`1, 3, 4, 6-8, 10, 11, 13-15,
`17, 18, 20, 22, 23, 25, 26,
`28, and 30
`5, 12, 21, and 29
`
`§103
`
`3.
`
`References
`Kim in view of Tong
`Ketchum in view of Li
`
`Ketchum in view of Li and further
`in view of Smee
`
`
`V. TECHNOLOGY OVERVIEW
`The ’512 patent describes systems and techniques for communicating pilot
`
`signals of different types between base and mobile stations. EX1001, Abstract. The
`
`claims of the ’512 patent recite these systems and techniques in terms of four
`
`general concepts: (i) the system is an orthogonal frequency division multiple access
`
`(OFDMA) system; (ii) base stations communicate various pilots signals to mobile
`
`stations; (iii) mobile stations use the pilot signals for channel estimation and to
`
`recover transmitted data; and (iv) base stations transmit signals using beamforming.
`
`But these concepts and combinations were well-known before the ’512 patent’s
`
`earliest possible priority date. EX1003, ¶¶46-63.
`
`A. OFDMA Systems Were Well Known
`Dr. Min explains that OFDMA systems were well-known prior the ’512
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`
`Petition for Inter Partes Review of
`U.S. Patent No. 10,965,512
`patent. Id.,¶¶47-55. Indeed, orthogonal frequency-division multiplexing (OFDM)
`
`and its “logical extension,” OFDMA, have long been known in the art, including in
`
`cellular systems. EX1015, Anderson, 307; see also EX1003, ¶47.
`
`“The basic principle of OFDM [] is to split a high-rate data stream into a
`
`number of lower rate streams that are transmitted simultaneously over a number of
`
`subcarriers.” EX1021, Hara, 43. The “frequency response of each sub-carrier is
`
`designed to be orthogonal to that of each other sub-carrier in order to allow data
`
`modulated to each sub-carrier to be independently recovered at a receiver.”
`
`EX1003, ¶¶48-53; EX1014, 10:15-19. OFDMA is a “variation” or “logical
`
`extension” of OFDM, in which “multiple-access is realized by providing each user
`
`with a fraction of the available number of subcarriers.” EX1023, Van Nee, 213;
`
`EX1015, Anderson, 307; EX1003, ¶¶54-55.
`
`B. Communicating Various Pilots Signals Between Base Stations and
`Mobile Stations Was Well-Known
`Dr. Min also explains that the use of pilots signals was well-known prior to
`
`the earliest possible priority date of the ’512 patent. Id.,¶¶56-60. Pilot signals are
`
`signals that have a “value known to the receiver,” and “enable the receiver to
`
`perform various functions,” such as “channel estimation, timing and frequency
`
`acquisition, data demodulation, and so on.” EX1008, Ma, 2:1-14; EX1007, Li, ¶28;
`
`EX1006, ¶8.
`
`Dr. Min also explains that it was well-known that OFDM/OFDMA systems
`
`
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`
`Petition for Inter Partes Review of
`U.S. Patent No. 10,965,512
`implement multiple types of pilots that could be used, for instance, for different
`
`functions. EX1003, ¶61. As described in more detail below, Ketchum discloses an
`
`OFDM multiple-access system that implements “various types of pilot.” EX1006,
`
`Abstract. Further, Kim discloses an OFDMA cellular system that implements two
`
`types of pilot signals—a “[pilot] pattern in common for each cell,” and a separate
`
`pilot pattern that is “different for each cell.” EX1004, 6:23-7:10, 24:20-25:5.
`
`C. OFDM/OFDMA Cellular Systems Implemented Pilot Symbols for
`Channel Estimation and Data Recovery
`Dr. Min explains the well-known role of pilot signals in performing channel
`
`estimation for recovering data at the receiver. EX1003, ¶¶56-60; EX1025,
`
`Krishnan, 1:52-61. Specifically, receivers use pilot signals to determine “[a]n
`
`accurate estimate of the response” of the communication channel (e.g., air or
`
`space). EX1025, 1:52-61; EX1024, Bahai, 15, 117-118; EX1003, ¶¶56-57. “Since
`
`the pilot is made up of symbols that are known a priori by the receiver, the channel
`
`response can be estimated as the ratio of the received pilot symbol over the
`
`transmitted pilot symbol for each [subcarrier] used for pilot transmission.”
`
`EX1025, 1:55-61. The receiver then uses the channel estimate “to acquire the
`
`original [data]” provided by the base station. EX1024, 118; EX1003, ¶¶58-60.
`
`D. Beamforming Was Well-Known
`Dr. Min further explains that beamforming was well-known prior to the
`
`earliest possible priority date of the ’512 patent. EX1003, ¶¶62-63. It was also well-
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`
`Petition for Inter Partes Review of
`U.S. Patent No. 10,965,512
`known for cellular systems to communicate OFDM downlink signals (including
`
`pilot signals) using beamforming. Id. Beamforming is a communication technique
`
`in which electromagnetic waves transmitted by multiple antennas are “focused in a
`
`desired direction” to form a “beam.” EX1026, Casas, 1:20-24.
`
`VI. THE ’512 PATENT
`A.
`Summary of the ’512 Patent
`The ’512 patent is directed to a “multi-carrier cellular wireless network [that]
`
`employs base stations [] that transmit two different groups of pilot subcarriers”—
`
`“cell-specific pilot subcarriers, which are used by a receiver to extract information
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`unique to each individual cell,” and “common pilots subcarriers, which are designed
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`to possess a set of characteristics common to all the base stations [] of the system.”
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`EX1001, Abstract; EX1003, ¶¶41-45. As shown in Figure 5, base stations within
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`the system insert cell-specific pilots, common pilots, and data signals at appropriate
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`subcarrier frequencies in a downlink signal. EX1001, 3:55-59, 5:34-48.
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`Petition for Inter Partes Review of
`U.S. Patent No. 10,965,512
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`The “cell-specific pilot subcarriers can be used in channel estimation.”
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`Id.,3:17-23. The “common pilot subcarriers” can be used for “frequency offset
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`estimation and timing estimation,” as well as to recover “data information common
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`to all cells in the network.” Id.,5:65-67, 8:65-9:5. To recover this data, mobile
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`stations perform channel estimation using the common pilot subcarrier “to
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`compensate for the channel effect” between the base station and mobile station.
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`Id.,9:1-5.
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`Petition for Inter Partes Review of
`U.S. Patent No. 10,965,512
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`B.
`Prosecution History Summary
`The application that issued as the ’512 patent received a first-action-
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`allowance at the USPTO. EX1002, ’512 Patent Prosecution History, 162-171. The
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`Examiner stated that the “closest prior art of record” included U.S. Patent No.
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`7,650,152 to Li et al. (EX1018, Li ’152) and U.S. Patent Pub. No. 2004/0190598
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`to Seki et al. (EX1019, Seki). Id.,167-168. But, as explained below, the claimed
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`concepts existed well before the earliest possible priority date of the ’512 patent.
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`Had any of the aforementioned references been before the examiner during
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`prosecution, the ’512 patent should not have been allowed.
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`C. Level of Ordinary Skill in the Art
`A person of ordinary skill in the art (“POSA”) would have a bachelor’s
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`degree in electrical engineering, computer engineering, computer science, or an
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`Petition for Inter Partes Review of
`U.S. Patent No. 10,965,512
`equivalent field, or an advanced degree in those fields, as well as least 3-5 years of
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`academic or industry experience in mobile wireless communications, or
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`comparable industry experience. EX1003, ¶65.
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`D. Claim Construction
`In an inter partes review, claims are “construed using the same claim
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`construction standard that would be used to construe the claim in a civil action
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`under 35 U.S.C. 282(b).” 37 C.F.R. §42.100 (b). All claim terms must be given their
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`ordinary and customary meaning as understood by a POSA at the time of the
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`invention, in light of the specification and the prosecution history of the patent. Id.
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`Solely for the purposes of this Petition, Petitioner submits that all claim terms
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`should receive their plain and ordinary meaning in the context of the ’512 patent
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`specification.2 EX1003, ¶66.
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`VII. OVERVIEW OF THE APPLIED REFERENCES
`A. Kim
`Kim describes an “OFDMA-based cellular system” including base stations
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`that provide downlink signals to mobile terminals. EX1004, Abstract, 1:15-17;
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`EX1003, ¶¶67-75. As shown in Figure 1, the downlink signal includes “traffic slots”
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`20 that include pilot symbols 200 inserted on a particular subcarrier (y-axis) for a
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`2 Petitioner reserves the right to challenge the validity of the claims under 35 U.S.C.
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`§112 in other proceedings and forums.
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`U.S. Patent No. 10,965,512
`particular timeslot (x-axis). EX1004, 1:14-21, 11:15-12:10. The traffic slots also
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`include “traffic data.” Id.,46:2-16.
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`
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`Kim’s pilots are implemented as a “combination of Q [pilot] patterns,”
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`including at least one pilot pattern specific to the cell and at least one pilot pattern
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`“used in common by all the cells.” Id.,24:2-11, 24:20-25:5. Figure 10 shows three
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`example pilot patterns, represented as Pq,s,c (i), where q represents the respective
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`pilot pattern. Id.,24:20-25:5. The purple symbols represent pilot pattern 0, the blue
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`symbols represent pilot pattern 1, and the green symbols represent pilot pattern Q-1
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`(the pilot pattern number q for these patterns is underlined in red). In such OFDM
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`symbols, at least one of the pilot patterns (e.g., pattern 0, highlighted purple)
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`represents one of the Q1 common pilot patterns and at least one of the pilot patterns
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`(e.g., patterns 1 and Q-1, highlighted blue and green respectively) represents one of
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`the Q2 cell-specific pilot patterns that are specific to the particular cell associated
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`with the base station. EX1003, ¶¶73.
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`
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`Kim’s base station provides the downlink signal on “each transmit antenna.”
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`EX1004, 54:8-10. A mobile terminal receives the downlink signal, and uses the
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`common pattern pilots for “slot synchronization,” and uses the cell-specific pattern
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`pilots “to search the cells.” Id.,25:20-22, 26:3-7, 27:10-28:13.
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`Petition for Inter Partes Review of
`U.S. Patent No. 10,965,512
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`
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`B. Ketchum
`Ketchum discloses a multiple-access wireless MIMO system that implements
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`pilots of “different types” that “support various functions that may be needed for
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`proper system operation, such as timing and frequency acquisition, channel
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`estimation, calibration, and so on.” EX1006, Abstract, ¶11; EX1003, ¶¶76-79. “The
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`various types of pilot” are shown in Table 1, below. EX1006, ¶12.
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`U.S. Patent No. 10,965,512
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`Ketchum discloses base stations that provide the various pilots along with
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`data to mobile terminals in OFDM symbols. Id.,¶¶33, 35. As an example, Ketchum
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`discloses that its beacon pilots can be provided on “a set of 12 BPSK modulation
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`symbols for 12 specific subbands.” Id.,¶39. Further, the steered reference pilot can
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`be provided on a set of “52 QPSK modulation symbols.” Id.,¶47.
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`User terminals use the beacon pilots to determine “system timing and
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`frequency acquisition.” Id.,¶¶41, 42. The terminals use the steered reference pilot
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`“for channel estimation.” Id.,¶12. The terminals then use the channel estimate “to
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`recover the transmitted data.” Id.,¶¶7-8.
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`C. Tong
`Tong also discloses a wireless communication system that “transmit[s]
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`multiple streams of data to a given user” element using beam-forming. EX1005,
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`Petition for Inter Partes Review of
`U.S. Patent No. 10,965,512
`Tong, Abstract, 8:50-66, 11:60-12:4; EX1003, ¶¶80-82. The streams of data include
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`pilot signals, which the receiver uses “for channel estimation,” and to “recover the
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`originally transmitted data.” EX1005, 6:35-58.
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`D. Li
`Li discloses a cellular system that implements “OFDMA.” EX1007, ¶19;
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`EX1003, ¶83. Li’s system includes base stations that “broadcast[] pilot OFDM
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`symbols” for various system functions, such as “time and frequency
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`synchronization, channel estimation and signal-to-interference/noise (SINR) ratio
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`measurement for cluster allocation.” EX1007, ¶28. “The pilot symbols may be
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`different for different cells (or sectors).” Id.,¶28.
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`E.
`Smee
`Smee discloses “[p]ilot transmission schemes suitable for use in wireless
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`multi-carrier (e.g., OFDM) communication systems.” EX1017, Abstract; EX1003,
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`¶¶84-85. The pilot transmission schemes utilize “frequency orthogonality” by
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`causing different base stations to transmit pilots “on disjoint sets of subbands”
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`(subcarriers). EX1017, ¶10; see also ¶¶39, 46.
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`VIII. GROUNDS OF UNPATENTABILITY
`Claims 1-30 are unpatentable for at least the reasons set forth below. EX1003,
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`¶¶86-261.
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`Petition for Inter Partes Review of
`U.S. Patent No. 10,965,512
`A. Ground 1: The combination of Kim and Tong renders obvious claims
`1-30.
`1.
`
`A POSA would have been motivated to combine Kim and Tong
`a)
`A POSA would have been motivated to implement
`beamforming in Kim’s base station, as taught by Tong.
`A POSA would have been motivated to implement beamforming, as taught
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`by Tong, in Kim’s system. EX1003, ¶¶87-93. Kim seeks to improve signal quality
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`of its “downlink signal” that is transmitted using “at least one transmit antenna.”
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`EX1004, 29:16-18, 32:3-15, 34:12-17, 45:21-46:16; EX1003, ¶87. But Kim does
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`not disclose how its multiple antennas could be used to improve signal quality—a
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`well-known characteristic that had been a motivating force for cellular system
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`designers for years before the ’512 patent. EX1003, ¶87. A POSA would have thus
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`sought references that taught efficient multi-antenna transmission techniques. Id.
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`Tong is such a reference.
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`Like Kim, Tong teaches a cellular system that uses OFDM communication
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`techniques to transmit pilot signals from a base station to mobile terminals using
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`multiple antennas. EX1004, 29:16-18, 45:21-46:16; EX1005, 4:49-55, 5:64-8:7,
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`8:61-9:4. Tong explains that implementing beamforming to transmit signals from
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`the base station to the mobile terminals is beneficial to “provide additional gain,”
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`to “increase the signal-to-noise ratio at a receiver,” and to “improve[e] the system
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`capacity,” as well as to “optimize channel capacity, signal-to-noise ratios, or a
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`combination thereof.” Id.,8:50-9:4, 11:23-28, 11:60-12:6. Tong’s beamforming
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`Petition for Inter Partes Review of
`U.S. Patent No. 10,965,512
`techniques are implemented “in an efficient manner.” Id.,1:62-67.
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`A POSA would have understood that such benefits could be achieved by
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`implementing beamforming in Kim’s system. EX1003, ¶¶88-91. A POSA would
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`have thus been motivated to implement such techniques in Kim’s system, such
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`that Kim’s “plurality of transmit antennas” would be implemented to provide
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`beam- forming for at least some subcarriers of the first plurality of subcarriers or
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`the second plurality of subcarriers of the downlink signal. Id.
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`A POSA would have been further motivated to combine Kim and Tong
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`because both are in the field of cellular communications, and address the same
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`problem—efficient communications between base stations and mobile terminals.
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`EX1003, ¶92. A POSA would have had a reasonable expectation of success in
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`implementing beamforming because i