Trials@uspto.gov
`571-272-7822
`
`Paper No. 11.
`Date: April 2, 2024.
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MEDIATEK INC. and
`NXP USA, INC.
`Petitioner,
`v.
`BELL NORTHERN RESEARCH, LLC,
`Patent Owner.
`
`IPR2023-01414
`Patent 8,416,862 B2
`
`
`
`
`
`
`
`
`
`Before JEFFREY W. ABRAHAM, JOHN D. HAMANN, and
`RUSSELL E. CASS, Administrative Patent Judges.
`ABRAHAM, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper No. 11.
`Date: April 2, 2024.
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MEDIATEK INC. and
`NXP USA, INC.
`Petitioner,
`v.
`BELL NORTHERN RESEARCH, LLC,
`Patent Owner.
`
`IPR2023-01414
`Patent 8,416,862 B2
`
`
`
`
`
`
`
`
`
`Before JEFFREY W. ABRAHAM, JOHN D. HAMANN, and
`RUSSELL E. CASS, Administrative Patent Judges.
`ABRAHAM, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`IPR2023-01414
`Patent 8,416,862 B2
`
`INTRODUCTION
`I.
`Background and Summary
`A.
`Mediatek Inc. and NXP USA, Inc. (collectively “Petitioner”) filed a
`Petition for an inter partes review (Paper 1 (“Pet.”)) challenging claims 1–4
`and 9–12 of U.S. Patent No. 8,416,862 B2 (Ex. 1001 (“the ’862 Patent”)).
`Bell Northern Research, LLC (“Patent Owner”) elected to waive its
`Preliminary Response. Paper 8.
`We have authority to determine whether to institute an inter partes
`review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). The standard
`for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which
`provides that an inter partes review may not be instituted “unless the
`Director determines . . . there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.”
`For the reasons set forth below, we determine the information
`presented in the Petition establishes a reasonable likelihood that Petitioner
`would prevail with respect to at least one of the challenged claims.
`Accordingly, we institute an inter partes review.
`Related Matters
`B.
`The parties identify several judicial proceedings in which the ’862
`patent was or is at issue, including the following proceedings involving
`Petitioner: Bell Northern Research, LLC v. Qualcomm Inc., Case No. 8-23-
`cv-01065 (C.D. Cal.); Bell Northern Research, LLC v. NXP Semiconductors,
`N.V., Case No. 1-23-cv-00633 (W.D. Tex.); and Electronic Devices and
`Semiconductor Devices Having Wireless Communication Capabilities and
`Components Thereof, Inv. No. 337-TA-1367 (USITC). Pet. 2–4; Paper 6;
`Paper 9.
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`Patent 8,416,862 B2
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`
`The ’862 Patent (Ex. 1001)
`C.
`The ’862 patent relates to wireless communications using
`beamforming. Ex. 1001, 1:20–22. The ’862 patent describes that, “[i]n
`general, beamforming is a processing technique to create a focused antenna
`beam by shifting a signal in time or in phase to provide gain of the signal in
`a desired direction and to attenuate the signal in other directions.” Ex. 1001,
`2:67–3:4. The ’862 patent explains that, “[i]n order for a transmitter to
`properly implement beamforming (i.e., determine the beamforming matrix
`[V]), it needs to know properties of the channel over which the wireless
`communication is conveyed.” Ex. 1001, 3:14–17. For example, the receiver
`may “determine the channel response (H)” and “provide it as the feedback
`information” to the transmitter. Ex. 1001, 3:19–22.
`The ’862 patent explains that one issue with this feedback approach is
`the size of the feedback packet “may be so large that, during the time it takes
`to send it to the transmitter, the response of the channel has changed.” Ex.
`1001, 3:22–25. To reduce the size of the feedback packet, “the receiver may
`decompose the channel using singular value decomposition (SVD) and send
`information relating only to a calculated value of the transmitter’s
`beamforming matrix (V) as the feedback information.” Ex. 1001, 3:26–30.
`According to the ’862 patent, “[w]hile this approach reduces the size of the
`feedback information, its size is still an issue for a [multiple-input-multiple-
`output (MIMO)] wireless communication.” Ex. 1001, 3:33–35. Therefore,
`according to the ’862 patent, a need exists “for reducing beamforming
`feedback information for wireless communications.” Ex. 1001, 3:49–51.
`
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`Patent 8,416,862 B2
`Figure 7 of the ’862 patent, shown below, illustrates an embodiment
`of the invention for providing beamforming feedback information from a
`receiver to a transmitter. Ex. 1001, 13:25–27.
`
`
`Figure 7 illustrates a method of providing beamforming feedback
`information for MIMO wireless communication systems. Ex. 1001, 2:33–
`35, 13:25–27, 13:31–32. At step 702, a wireless communication device
`receives a preamble sequence from a transmitting wireless device and
`estimates a channel response (H) from the preamble sequence using “any
`number of techniques that are known in the art.” Ex. 1001, 13:43–44. Next,
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`Patent 8,416,862 B2
`at step 704, the receiving wireless device determines an estimated
`transmitter beamforming unitary matrix (V) based on the channel response
`and a known receiver beamforming unitary matrix (U). Ex. 1001, 13:44–47.
`The ’862 patent explains that the channel response (H), the estimated
`transmitter beamforming unitary matrix (V), and known receiver
`beamforming unitary matrix (U) are related by the equation H=UDV*,
`where D is a diagonal matrix. Ex. 1001, 13:47–51.
`In the embodiment shown in Figure 7, the receiving wireless device
`produces V in Cartesian coordinates and then converts V to polar
`coordinates (step 706). Ex. 1001, 13:54–58. The receiving wireless device
`then decomposes V to produce the transmitter beamforming information
`(step 708) and sends the beamforming information to the transmitting
`wireless device (step 710). Ex. 1001, 13:58–62, 14:4–6. The transmitting
`wireless device then uses the feedback components to generate a new
`beamforming matrix (V), which the device uses for subsequent
`transmissions (step 712). Ex. 1001, 14:9–13.
`The ’862 patent discloses that, according to one embodiment, the
`decomposition operations of step 708 employ a Givens Rotation operation.
`Ex. 1001, 13:63–65. The ’862 patent explains that the Givens Rotation
`relies on the observation that, for a particular condition, some of the angles
`“are redundant” and thus, “the set of angles fed back to the transmitting
`wireless device are reduced.” Ex. 1001, 13:65–14:3.
`Illustrative Claim
`D.
`Among the challenged claims (claims 1–4 and 9–12), claims 1 and 9
`are independent. Claim 9 is illustrative of the subject matter of the
`challenged claims and is reproduced below:
`
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`Patent 8,416,862 B2
`9. [9p] A wireless communication device comprising:
`[9a] a plurality of Radio Frequency (RF) components
`operable to receive an RF signal and to convert the
`RF signal to a baseband signal; and
`[9b] a baseband processing module operable to:
`[9c] receive a preamble sequence carried by the
`baseband signal;
`[9d] estimate a channel response based upon the
`preamble sequence;
`[9e] determine an estimated transmitter beamforming
`unitary matrix (V) based upon the channel
`response and a receiver beamforming unitary
`matrix (U);
`[9f] decompose the estimated transmitter
`beamforming unitary matrix (V) to produce the
`transmitter beamforming information; and
`[9g] form a baseband signal employed by the
`plurality of RF components to wirelessly send
`the transmitter beamforming information to the
`transmitting wireless device.
`Ex. 1001, 17:16–35 (formatting and labels added to correspond with
`Petitioner’s designation of claim limitations (Pet., Table of Claims)).
`Independent claim 1 is a method claim with limitations that correspond to
`those recited in claim 9. Ex. 1001, 16:8–26.
`
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`Patent 8,416,862 B2
`Asserted Unpatentability Challenges
`E.
`Petitioner asserts that claims 1–4 and 9–12 are unpatentable based on
`the following challenges:
`Claims Challenged
`1–4, 9–12
`1–4, 9–12
`1, 3, 4, 9, 11, 12
`2, 10
`1, 3, 4, 9, 11, 12
`
`References
`Li-748,2 Tong,3 Mao4
`Tong, Mao
`Li-054,5 Mao
`Li-054, Mao, Yang6
`Poon,7 Mao
`
`35 U.S.C. §1
`103
`103
`103
`103
`103
`
`Petitioner relies on the declaration testimony of Dr. Jonathan Wells
`(Ex. 1003).
`
`II. ANALYSIS
`Level of Ordinary Skill in the Art
`A.
`Petitioner asserts that a person of ordinary skill in the art would have
`had “a Bachelor’s degree in Electrical Engineering, Computer Engineering,
`Computer Science, or a related field, and at least 2 years of experience in the
`field of wireless communication, or had equivalent education, work, or
`
`
`1 The relevant sections of the Leahy-Smith America Invents Act (“AIA”),
`Pub. L. No. 112–29, took effect on March 16, 2013. Because the ’862
`patent has an effective filing date prior to the effective date of the applicable
`AIA amendments, the pre-AIA version of § 103 applies.
`2 US 7,236,748 B2, filed Sept. 30, 2004, issued June 26, 2007 (Ex. 1004).
`3 US 2008/0108310 A1, filed June 22, 2005, published May 8, 2008
`(Ex. 1005).
`4 US 7,312,750 B2, filed Mar. 4, 2005, issued Dec. 25, 2007 (Ex. 1006).
`5 US 2006/0092054 A1, filed Sept. 8, 2004, published May 4, 2006
`(Ex. 1007).
`6 Yang et al., Reducing the Computations of the Singular Value
`Decomposition Array Given by Brent and Luk, SIAM J. MATRIX ANAL.
`APPL., Vol. 12, No. 4, pp. 713–725 (Oct. 1991) (Ex. 1008).
`7 US 7,710,925 B2, filed June 23, 2004, issued May 4, 2010 (Ex. 1009).
`
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`Patent 8,416,862 B2
`experience in this field.” Pet. 12 (citing Ex. 1003 ¶ 23). Patent Owner does
`not challenge Petitioner’s definition or offer its own.
`In light of the record before us, and for purposes of this Decision, we
`adopt Petitioner’s proposal regarding the level of ordinary skill in the art.
`Based on our review of the ’862 patent and the prior art of record, we
`determine that the definition offered by Petitioner comports with the
`qualifications a person would have needed to understand and implement the
`teachings of the ’862 patent and the prior art. See Okajima v. Bourdeau, 261
`F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding
`ordinary skill level are not required “where the prior art itself reflects an
`appropriate level and a need for testimony is not shown”) (quoting Litton
`Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir.
`1985)).
`
`B. Claim Construction
`In an inter partes review, we construe claim terms according to the
`standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed.
`Cir. 2005) (en banc). 37 C.F.R. § 42.100(b). Under Phillips, claim terms
`are afforded “their ordinary and customary meaning.” Phillips, 415 F.3d at
`1312. “[T]he ordinary and customary meaning of a claim term is the
`meaning that the term would have to a person of ordinary skill in the art in
`question at the time of the invention.” Id. at 1313. “Importantly, the person
`of ordinary skill in the art is deemed to read the claim term not only in the
`context of the particular claim in which the disputed term appears, but in the
`context of the entire patent, including the specification.” Id.
`Petitioner argues that the plain and ordinary meaning of the claim
`language should apply, and we do not need to formally construe any claim
`
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`Patent 8,416,862 B2
`terms for purposes of this Decision. Pet. 12–13.8 Patent Owner does not
`address claim construction. See Paper 8.
`After considering the arguments and information presented in the
`Petition, we determine that it is not necessary to construe any terms for
`purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad
`Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs.,
`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly
`those terms need be construed that are in controversy, and only to the extent
`necessary to resolve the controversy.”)).
`We do note, however, that limitation [9f] refers to producing “the
`transmitter beamforming information,” but the phrase “transmitting
`beamforming information” does not appear earlier in claim 9. We,
`therefore, question whether there is proper antecedent basis for “the
`transmitter beamforming information” in [9f]. We invite the parties to
`address this issue to clarify the language in claim 9 during the course of the
`proceeding.
`C. Asserted Obviousness Over Li-748, Tong, and Mao
`Petitioner contends that claims 1–4 and 9–12 of the ’862 patent are
`unpatentable under 35 U.S.C. § 103 as obvious over Li-748, Tong, and Mao.
`Pet. 6, 15–46.
`
`
`8 Petitioner states that “Patent Owner and other parties briefed claim
`construction issues in other district court litigation and held a Markman
`hearing, followed by a claim construction order.” Pet. 12. Petitioner
`indicates that the court did not adopt any proposed construction, determining
`that the plain and ordinary meaning of the claim language was recognizable.
`Pet. 12–15. Petitioner also argues that it would prevail even if Patent Owner
`argues for, and the Board adopts, any of the constructions addressed in the
`other proceedings. Pet. 12–15.
`
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`
`1. Li-748 (Ex. 1004)
`Li-748 is a U.S. patent titled “Closed Loop Feedback in MIMO
`Systems.” Ex. 1004, code (54). Li discloses reducing feedback bandwidth
`in a MIMO system by “representing a beamforming matrix using orthogonal
`generator matrices.” Ex. 1004, code (57), 1:12–14. Li-748 states MIMO
`systems typically transmit channel state information from a receiver to a
`transmitter, and the transmitter “may then utilize the information to do beam
`forming.” Ex. 1004, 1:12–14. According to Li-748, “[t]ransmitting channel
`state information consumes bandwidth that might otherwise be available for
`data traffic.” Ex. 1004, 1:12–17.
`Li-748 discloses that “channel state information may be represented
`by an n by n unitary beamforming matrix V determined using a singular
`value decomposition (SVD) algorithm.” Ex. 1004, 2:52–57. Li-748 further
`discloses that, “in a straightforward implementation, the receiver sends each
`element of the unitary matrix V back to the transmitter,” which “involves
`sending information related to the 2n2 real numbers for any n by n complex
`unitary matrix, where n is the number of spatial channels in the MIMO
`system.” Ex. 1004, 2:57–62.
`In some embodiments, Li-748 teaches representing the beamforming
`matrix V “by n2–1 real numbers instead of 2n2 real numbers.” Ex. 1004,
`2:63–65. Li-748 explains that “[b]y sending n2–1 real numbers instead of
`2n2 real numbers to represent the beamforming matrix, the feedback
`bandwidth may be reduced.” Ex. 1004, 2:65–67.
`
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`2. Tong (Ex. 1005)
`Tong is a U.S. patent application publication titled “Closed Loop
`MIMO Systems and Methods.” Ex. 1005, code (54). Figure 1 of Tong,
`below, shows a schematic diagram representation of one embodiment of
`Tong’s communication system.
`
`
`Figure 1 above illustrates base station controller (BSC) 10, which
`controls wireless communications with multiple cells 12 served by
`corresponding base stations (BS) 14. Ex. 1005 ¶ 73. Tong discloses that
`each base station 14 facilitates communications with mobile terminals 16
`within the cell associated with the corresponding base station. Ex. 1005
`¶ 73.
`
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`Figure 3 of Tong, below, is a block diagram of the internal circuitry of
`mobile terminal 16. Ex. 1005 ¶ 77.
`
`
`As illustrated in Figure 3, mobile terminal 16 includes control system
`32, baseband processor 34, transmit circuitry 36, receive circuitry 38,
`multiple antennas 40, and user interface circuitry 42. Ex. 1005 ¶ 77. Tong
`discloses that “receive circuitry 38 receives radio frequency signals bearing
`information from one or more base stations 14.” Ex. 1005 ¶ 77. Tong
`explains that a low noise amplifier and filter “cooperate to amplify and
`remove broadband interference from the signal for processing,” and
`“[d]ownconversion and digitization circuitry . . . will then downconvert the
`filtered, received signal to an intermediate or baseband frequency signal,
`which is then digitized into one or more digital streams.” Ex. 1005 ¶ 77.
`Tong also discloses an embodiment in which the beamforming unitary
`matrix V is determined through SVD and “is fed back from the receiver to
`the transmitter using Givens feedback.” Ex. 1005 ¶ 222. According to
`Tong, the V matrix is decomposed by the Givens transform to produce a
`series of matrices, which “can then be uniquely represented by two
`parameters θ and C.” Ex. 1005 ¶ 223. These parameters are quantized and
`fed back to the transmitter over the MIMO feedback channel. Ex. 1005
`
`12
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`¶¶ 223, 224. Tong states that “[b]y decomposing the SVD-based unitary V
`matrix into Givens matrices, the V matrix can be represented by n2–n
`independent complex parameters.” Ex. 1005 ¶ 227.
`
`3. Mao (Ex. 1006)
`Mao is a U.S. patent titled “Adaptive Beam-Forming System Using
`Hierarchical Weight Banks for Antenna Array in Wireless Communication
`System.” Ex. 1006, code (54). Figure 1 of Mao, below, schematically
`depicts one embodiment of its receiver beam-forming system. Ex. 1006,
`7:34–36.
`
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`As illustrated in Figure 1 above, Mao’s receiver beam-forming system
`includes an antenna array with M antenna elements 400, radio frequency
`(RF) units 410, down converters 420, analog-to-digital (A/D) units 430,
`multipath delay profile estimation unit 460, beamforming unit 465, and
`Maximum Ratio Combiner 480. Ex. 1006, 7:36–59. Mao explains that in
`its system, antenna elements 400 receive and transmit RF signals, and the
`RF units and frequency converters are configured to “transform received RF
`signals to receive analog base-band signals and transform analog transmit
`base-band signals into . . . transmit RF signals.” Ex. 1006, 3:28–36.
`
`4. Analysis
`a. Independent claim 9
`Petitioner contends that Li-748 discloses an electronic system that
`may be used in a wireless network and operates as a wireless
`communications device, as recited in the preamble of claim 9. Pet. 27
`(citing Ex. 1004, 7:57–60, 8:60–64, 9:32–46, Figs. 1, 4).
`Limitation 9[a] recites “a plurality of Radio Frequency (RF)
`components operable to receive an RF signal and to convert the RF signal to
`a baseband signal.” Ex. 1001, 17:17–19. For this limitation, Petitioner
`directs us to Li-748’s disclosure of antennas 410 for sending and receiving
`signals and physical layer 430 that “includes an RF receiver to receive
`signals and perform ‘front end’ processing such as low noise amplification
`(LNA), filtering, [and] frequency conversion.” Pet. 28 (quoting Ex. 1004,
`9:66–10:6). Petitioner contends, based on testimony from Dr. Wells, that a
`person of ordinary skill in the art would have understood the “front end”
`processing disclosed in Li-748 to include the common technique of
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`converting an RF signal to a baseband signal for further processing. Pet. 28
`(citing Ex. 1003 ¶ 76).
`Petitioner further contends that Tong also demonstrates converting RF
`signals to baseband signals was a common and well-known practice for
`wireless communication devices. Pet. 28–29. In particular, Petitioner
`directs us to Tong’s disclosure of “receive circuitry” that receives radio
`frequency signals and “[d]ownconversion and digitization circuitry” that
`converts the received signal to a baseband signal, which is then digitized.
`Pet. 29 (citing Ex. 1005 ¶¶ 74, 77, 88, 94–95).
`Petitioner argues that a person of ordinary skill in the art would have
`implemented Li-748’s device in view of Tong to convert received RF signals
`to baseband signals to “advantageously and properly prepare for a digital
`conversion (to a digital signal) for processing by the digital electronics of the
`mobile device.” Pet. 29 (citing Ex. 1003 ¶ 78). Petitioner also argues that
`applying Tong’s suggestion of receiving and converting RF signals to
`baseband signals involved merely the application of a known technique to a
`known system, leading to predictable results. Pet. 30 (citing Ex. 1003 ¶ 79).
`Petitioner next contends that processor 460 and memory 470 disclosed
`in Li-748 provide a baseband processing module, as recited in limitation
`[9b], that receives a preamble sequence carried by the baseband signal and
`estimates a channel response based on the preamble sequence, as limitations
`[9c] and [9d] require. Pet. 32–34 (citing Ex. 1004, Fig. 2, 3:31–34
`(disclosing that “the transmitter may send training symbols to the receiver,”
`“the receiver may evaluate H and compute the matrix V’,” and “the receiver
`may feedback parameters representing V to the transmitter”), 8:4–7
`(disclosing that “channel state information is estimated from received
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`signals” and “channel state information may include the channel state matrix
`H”), 10:16–22; Ex. 1003 ¶¶ 80–85).
`Petitioner also contends that Li-748 teaches that the baseband
`processing module determines an estimated transmitter beamforming matrix
`(V) based on the channel response and a receiver beamforming unitary
`matrix (U), as recited in limitation [9e]. Pet. 34–35. For this limitation,
`Petitioner directs us to Li-748’s disclosure that “[a] transmit beamforming
`matrix may be found using” the well-known SVD equation H=UDV’.
`Pet. 34–35 (citing Ex. 1004, 3:19–32, Fig. 2; Ex. 1003 ¶¶ 86–87).
`Limitation [9f] requires the baseband processing module to be
`operable to “decompose the estimated transmitter beamforming unitary
`matrix (V) to produce the transmitter beamforming information.” Ex. 1001,
`17:28–30. Petitioner contends that a person of ordinary skill in the art would
`have recognized Li-748 teaches or suggests a reduction or decomposition of
`the transmit beamforming matrix in view of its disclosure that, in some
`embodiments, “the beamforming matrix V is represented by n2-1 real
`numbers instead of 2n2 real numbers,” and “[b]y sending n2-1 real numbers
`instead of 2n2 real numbers, the feedback bandwidth may be reduced.”
`Pet. 35 (quoting Ex. 1004, 2:63–67).
`Petitioner also argues that a person of ordinary skill in the art would
`have known this feature was widely known and used in wireless
`communication devices based on Tong’s disclosure that after an SVD is
`performed on channel matrix H, “the V matrix is decomposed by the Givens
`transform 330 to produce a series of matrices,” and “[b]y decomposing the
`SVD-based unitary V matrix into Givens matrices, the V matrix can be
`represented by n2-n independent complex parameters.” Pet. 36 (quoting
`Ex. 1005 ¶¶ 223, 227 (Petitioner’s emphasis omitted)). Petitioner also points
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`out that Tong states its solution would “reduce the amount of feedback
`required” and allow the transmitter receiving the beamforming information
`to “verify the integrity of the received matrix V.” Pet. 36–37 (quoting
`Ex. 1005 ¶¶ 222, 226).
`In view of these advantages, Petitioner asserts that a person of
`ordinary skill in the art would have implemented Tong’s Givens-rotation-
`based decomposition techniques in Li-748’s device. Pet. 36–37. Petitioner
`also contends that implementing Tong’s techniques would have been the
`mere application of a known technique to a known system ready for
`improvement to yield predictable results. Pet. 37 (citing Ex. 1003 ¶ 91).
`Limitation [9g] requires the baseband processing module be operable
`to “form a baseband signal employed by the plurality of RF components to
`wirelessly send the transmitter beamforming information to the transmitting
`wireless device.” Ex. 1001, 17:31–34. Petitioner contends Li-748 discloses
`that its receiver may feedback parameters representing V to the transmitter.
`Pet. 37–38 (citing Ex. 1004, 3:31–39, Fig. 2). Petitioner also argues Tong
`and Mao teach or suggest forming baseband signals for transmission using
`RF components. Pet. 38–40 (citing Ex. 1005 ¶¶ 76, 79, 87, 94–95, Figs. 2–
`5; Ex. 1006, 3:28–36, 6:34–35; Ex. 1003 ¶¶ 92–96). Petitioner further
`argues implementing the teachings of Tong and Mao in Li-748 would have
`involved “merely the application of a known technique (e.g., forming a
`baseband signal employed by the plurality of RF components) to a known
`system (Li-748’s device) ready for improvement to yield predictable
`results.” Pet. 41 (citing Ex. 1003 ¶ 97).
`Patent Owner does not present any arguments regarding claim 9. See
`Paper 8.
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`After reviewing the undisputed evidence and arguments Petitioner
`presents in the Petition, including the relevant portions of the supporting
`Wells Declaration, we are persuaded Petitioner has established a reasonable
`likelihood of prevailing in showing that claim 9 is unpatentable under
`35 U.S.C. § 103(a) as obvious over Li-748, Tong, and Mao. Petitioner has
`demonstrated sufficiently for purposes of institution that the combined
`disclosures of Li-748, Tong, and Mao teach or suggest the subject matter of
`claim 9, and that a person of ordinary skill in the art would have had reason
`to combine the teachings as claimed—to implement the device of Li-748 in
`a manner suggested by Tong and Mao—with a reasonable expectation of
`success.
`
`b. Dependent claims 10–12
`Claim 10 depends from claim 9 and adds that in determining the
`estimated transmitter beamforming unitary matrix, the baseband processing
`module is operable to “produce the estimated transmitter beamforming
`unitary matrix (V) in Cartesian coordinates” and “convert the estimated
`transmitter beamforming unitary matrix (V) to polar coordinates.” Ex. 1001,
`17:36–44. Petitioner relies on Li-748 alone and on Li-748 in combination
`with Tong for teaching producing V in Cartesian coordinates and converting
`it to polar coordinates. Pet. 41–44 (citing Ex. 1004, 2:63–65, 3:5–11, 3:19–
`23; Ex. 1005 ¶¶ 66, 222, 223; Ex. 1003 ¶ 99).
`Claim 11 depends from claim 9 and adds “wherein the channel
`response (H), estimated transmitter beamforming unitary matrix (V), and the
`receiver beamforming unitary matrix (U) are related by the equation:
`H=UDV* where, D is a diagonal matrix.” Ex. 1001, 17:45–52. As
`discussed above, Petitioner contends Li-748 discloses this equation. Pet. 45
`(citing Ex. 1004, 3:19–32, 8:7–11, Fig. 2).
`
`18
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`IPR2023-01414
`Patent 8,416,862 B2
`Claim 12 depends from claim 9 and adds “wherein in determining the
`estimated transmitter beamforming unitary matrix (V) based upon the
`channel response and the receiver beamforming unitary matrix (U), the
`baseband processing module performs Singular Value Decomposition
`(SVD) operations.” Ex. 1001, 17:53–58. Petitioner contends Li-748
`discloses using SVD to determine V. Pet. 45–46 (citing Ex. 1004, 3:19–32).
`Patent Owner does not present any arguments regarding claims 10–12.
`See Paper 8.
`On the current record, Petitioner demonstrates sufficiently that the
`combination of Li-748, Tong, and Mao teaches or suggests the subject
`matter of dependent claims 10–12, and provides sufficient reasoning with
`rational underpinning for combining the teachings as claimed. See Pet. 41–
`46; Ex. 1003 ¶¶ 98–106.
`
`c. Claims 1–4
`Petitioner contends that method claims 1–4 correspond to device
`claims 9–12. Pet. 26. Petitioner asserts that Li-748’s electronic system
`performs methods for feeding back transmitter beamforming information to
`a transmitting wireless device, and that the elements of claims 1–4 are
`rendered obvious for the same reasons as the corresponding portions of
`claims 9–12. Pet. 26–45.
`Patent Owner does not present any arguments regarding claims 1–4.
`See Paper 8.
`For the same reasons discussed above with regard to claims 9–12,
`Petitioner demonstrates sufficiently that the combination of Li-748, Tong,
`and Mao teaches or suggest the subject matter of claims 1–4, and provides
`sufficient reasoning with rational underpinning for combining the teachings
`as claimed. See Pet. 26–45.
`
`19
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`IPR2023-01414
`Patent 8,416,862 B2
`
`5. Summary
`Having reviewed the record, we determine that the information
`presented establishes a reasonable likelihood that Petitioner would prevail in
`showing that claims 1–4 and 9–12 of the ’862 patent are unpatentable under
`35 U.S.C. § 103(a) as obvious over Li-748, Tong, and Mao.
`III. CONCLUSION
`Because Petitioner has demonstrated a reasonable likelihood that at
`least one challenged claim of the ’862 patent is unpatentable over the prior
`art of record, we institute an inter partes review. And because we find some
`grounds sufficient for institution, we institute on all grounds in the petition.
`See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1353 (2018) (“The agency
`cannot curate the claims at issue but must decide them all.”); PGS
`Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting
`the statute as requiring “a simple yes-or-no institution choice respecting a
`petition, embracing all challenges included in the petition”).
`At this stage of the proceeding, we have not made a final
`determination with respect to the patentability of any challenged claim or
`any underlying factual or legal issue.
`IV. ORDER
`For the reasons given, it is:
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`review of claims 1–4 and 9–12 of the ’862 patent is instituted with respect to
`all grounds of unpatentability asserted in the Petition, commencing on the
`entry date of this Decision; and
`FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of trial.
`
`20
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`
`IPR2023-01414
`Patent 8,416,862 B2
`FOR PETITIONER:
`MediaTek:
`Cory C. Bell
`Luke H. MacDonald
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`cory.bell@finnegan.com
`luke.macdonald@finnegan.com
`
`NXP:
`Brian K. Erickson
`Brent Yamashita
`Martin Ellison
`Salvatore Tamburo
`Peiyao Zhang
`DLA Piper LLP (US)
`brian.erickson@us.dlapiper.com
`brent.yamashita@us.dlapiper.com
`martin.ellison@us.dlapiper.com
`peiyao.zhang@us.dlapiper.com
`salvatore.tamburo@us.dlapiper.com
`
`FOR PATENT OWNER:
`Jason M. Shapiro
`Timothy Devlin
`Devlin Law Firm LLC
`jshpiro@devlinlawfirm.com
`tdevlin@devlinlawfirm.com
`
`21
`
`
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