UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`PANASONIC AUTOMOTIVE SYSTEMS CO., LTD.,
`Petitioner,
`
`Vv.
`
`UNM RAINFOREST INNOVATIONS,
`Patent Owner.
`
`
`PTAB Case No. IPR2024-00364
`Patent No. 8,265,096 B2
`
`DECLARATION OF BRANIMIR VOJCIC, D.SC., INSUPPORT OF
`UNMRAINFOREST INNOVATIONS’ PRELIMINARY RESPONSE
`
`I, Dr. Branimir Vojcic, under the penalty of perjury under the laws of the United
`States, declare that the following is true and correct based onthe best of myability.
`
`Date: 13 May2024
`
`Signed:a ‘A
`
`
`
`Branimir Vojcic, Ph.D.
`
`Ex. 2001 - IPR2024-00364
`Panasonic v. UNM Rainforest Innovations
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`TABLE OF CONTENTS
`QUALIFICATIONS ........................................................................................ 5
`
`BASES OF OPINIONS ................................................................................... 9
`
`I.
`
`II.
`
`III. LEGAL FRAMEWORK ...............................................................................12
`
`A.
`
`B.
`
`Claim Construction ...................................................................................12
`
`Validity .....................................................................................................12
`
`1. Anticipation ......................................................................................13
`
`2. Obviousness .....................................................................................14
`
`IV. THE ’096 PATENT (EX1001] ......................................................................22
`
`A.
`
`B.
`
`Technical Background ..............................................................................22
`
`Challenged Claims ....................................................................................24
`
`1. Claim 8 .............................................................................................24
`
`2. Claim 44 ...........................................................................................25
`
`3. Claim 45 ...........................................................................................25
`
`4. Claim 46 ...........................................................................................25
`
`5. Claim 47 ...........................................................................................26
`
`6. Claim 49 ...........................................................................................26
`
`7. Claim 50 ...........................................................................................26
`
`C.
`
`Priority Date .............................................................................................26
`
`V.
`
`CLAIM CONSTRUCTIONS ........................................................................27
`
`A.
`
`B.
`
`“at least one of […] and […]” ..................................................................27
`
`“symbol period” ........................................................................................27
`
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`C.
`
`District Court Constructions .....................................................................27
`
`VI. VALIDITY ANALYSIS ...............................................................................28
`
`A. Ground 1: The Joint Proposal versus Claims 8, 44-47, And 50. ..............29
`
`1. Claim 8 .............................................................................................29
`
`2. Claim 44 ...........................................................................................34
`
`3. Claim 45 ...........................................................................................36
`
`4. Claim 46 ...........................................................................................36
`
`5. Claim 47 ...........................................................................................36
`
`6. Claim 50 ...........................................................................................36
`
`B.
`
`Ground 2: The Joint Proposal And Trainin versus Claim 49 ...................37
`
`1. Claim 49 ...........................................................................................37
`
`2. Motivation to Combine ....................................................................37
`
`C.
`
`Ground 3: Mujtaba versus Claim 8 ..........................................................38
`
`1. Claim 8 .............................................................................................38
`
`D. Ground 4: Mujtaba and Trainin versus Claims 8, 44-47, 49-50 ..............48
`
`1. Claim 8 .............................................................................................48
`
`2. Claim 44 ...........................................................................................49
`
`3. Claim 45 ...........................................................................................51
`
`4. Claim 46 ...........................................................................................51
`
`5. Claim 47 ...........................................................................................52
`
`6. Claim 49 ...........................................................................................52
`
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`7. Claim 50 ...........................................................................................52
`
`8. Motivation to Combine ....................................................................53
`
`E.
`
`The Asserted Prior Art Is Cumulative Of The Previous Art ....................56
`
`1. Mujtaba is cumulative of Nystrom ..................................................56
`
`2.
`
`Trainin is cumulative of Talukdar ...................................................58
`
`3. The Joint Proposal Is Cumulative of Talukdar ...............................59
`
`VII. CONCLUSION ..............................................................................................61
`
`
`
`
`
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`1.
`
`I have been retained by Key IP Law Group PLLC, as an independent
`
`technical expert in the Inter Partes Review between UNM Rainforest Innovations
`
`(“UNM”), and Panasonic Automotive Systems Co., Ltd. (“Panasonic”), PTAB Case
`
`No. IPR2024-00364 involving U.S. Patent No. 8,265,096 (“the ’096 patent”).
`
`2.
`
`I am being compensated for my work as a technical expert at my customary
`
`rate of $725 per hour. My compensation does not in any way depend on the outcome
`
`of this review, and I have no personal interest in the outcome of this review.
`
`I.
`
`QUALIFICATIONS
`
`3.
`
`I am an expert in wireless technology and other telecommunications areas.
`
`I am an Emeritus Professor of Engineering and Applied Science at The George
`
`Washington University, where I have been a member of the faculty since September
`
`1991. In addition, I have served as a consultant for a number of companies in the
`
`wireless communications industry in various technology areas. I have also served
`
`on numerous committees and as a reviewer and editor for several journals,
`
`conferences, and organizations.
`
`4.
`
`I received my Diploma of Engineering, Master of Science, and Doctor of
`
`Science degrees in Electrical Engineering from the University of Belgrade in
`
`Yugoslavia in 1981, 1986, and 1989, respectively. The primary focus of my Doctor
`
`of Science studies was on Code Division Multiple Access (CDMA) and spread
`
`spectrum communications technologies.
`
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`5.
`
`In 1991, I joined The George Washington University as an Assistant
`
`Professor and was promoted to Associate Professor and Professor in 1997 and 2000,
`
`respectively. From 2001 to 2004, I served as Chairman of the Electrical and
`
`Computer Engineering Department at The George Washington University and
`
`retired in 2015. During my tenure at The George Washington University, I have
`
`taught many different courses on communications theory and networks, wireless
`
`communications, CDMA, and I have been a course director for a number of courses
`
`in communications. I have supervised students mostly in the areas of wireless
`
`communications
`
`and
`
`CDMA
`
`(including
`
`IS-95,
`
`CDMA2000,
`
`WCDMA/HSDPA/HSUPA) and OFDM/LTE and have been a thesis director for a
`
`number of Doctor of Science candidates, who now have successful careers in
`
`academia, industry, and government.
`
`6. My research in the areas I just mentioned has been supported by the
`
`communications industry and various government agencies, such as the Advanced
`
`Research Project Agency (ARPA), the National Science Foundation (NSF), and the
`
`National Security Agency (NSA). Much of this research concerns communications
`
`theory, performance evaluation, modeling of wireless networks, multi-user
`
`detection, adaptive antenna arrays, and ad-hoc networks.
`
`7.
`
`I have authored and co-authored a number of journal and conference
`
`papers, contributed to various books, and co-authored a textbook on CDMA, entitled
`
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`The CDMA2000 System for Mobile Communications, Prentice Hall, 2004. I have
`
`also served as a co-editor of a book on wireless communications, entitled
`
`Multiaccess, Mobility, and Teletraffic in Wireless Communications, Volume III,
`
`Kluwer Academic Publishers, Norwell, Massachusetts, 1998. My CV includes a
`
`detailed listing of my publications. See Attachment A.
`
`8.
`
`I have also received awards for my work. For example, in 1995, I received
`
`the prestigious National Science Foundation Faculty Early CAREER Development
`
`Award. The award is given annually by the NSF to a select number of young
`
`professors nationwide to promote excellence in teaching and research.
`
`9.
`
`I have served as a consultant for numerous companies in the wireless
`
`communications industry in technology areas, including the areas of 2G/3G/4G
`
`mobile technologies, Wireless LANs, new generation broadcast systems, advanced
`
`mobile satellite systems and other aspects of modern communication systems. I
`
`have also taught academic courses as well as short courses for the industry and
`
`government on various aspects of communications in the areas of 2G, 2.5G, 3G, and
`
`4G cellular standards, such as CDMA2000 1xRTT, CDMA2000 Evolution Data
`
`Optimized (EVDO), Wideband Code Division Multiple Access (WCDMA), and
`
`LTE.
`
`10.
`
`I am a Senior Member of the IEEE and was an Associate Editor for IEEE
`
`Communications Letters and the Journal on Communications and Networks. I have
`
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`served as a member of technical program committees, as a session organizer for
`
`many technical conferences and workshops, and as a reviewer of technical papers
`
`for many journals and conferences.
`
`11.
`
`I am a co-inventor on about 20 patents; some representative examples
`
`include: U.S. Patent No. 6,523,147, entitled “Method and Apparatus for Forward
`
`Error Correction Coding for an AM In-Band On-Channel Digital Audio
`
`Broadcasting System,” U.S. Patent No. 8,595,590 B1, entitled “Systems and
`
`Methods for Encoding and Decoding Check-Irregular Non-Systematic IRA Codes,”
`
`and applications including “Joint Source-Channel Decoding with Source Sequence
`
`Augmentation,” U.S. 20140153654 A1, June 5, 2014, “Systems and Methods for
`
`Advanced Iterative Decoding and Channel Estimation of Concatenated Coding
`
`Systems,” U.S. 20140153625 A1, June 5, 2014, “Advanced Decoding of
`
`High/Medium/Low Density Parity Check Codes,” PCT/US13/72883, and
`
`International Application Number PCT/CA01/01488, entitled “Multi-User Detector
`
`For Direct Sequence - Code Division Multiple Access (DS/CDMA) Channels.”
`
`12. Over the last several years, I have evaluated many, on the order of
`
`hundreds, of patents that are essential or potentially essential to wireless standards
`
`for various clients. These evaluations typically include, for example, analyzing
`
`whether the patent claims read on the relevant standard, considering the importance
`
`of the technological inventions claimed, analyzing how such claimed inventions
`
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`compare to other similar patents in the field, searching for and reviewing potential
`
`prior art, reviewing and analyzing the prosecution histories of patents relevant to
`
`potential claim construction, infringement, or related issues, reviewing and
`
`analyzing the working group documents related to the relevant standard in relation
`
`to the claimed invention, and considering whether there are available alternatives to
`
`the claimed inventions.
`
`13. A copy of my CV is attached as Attachment A.
`
`II. BASES OF OPINIONS
`
`14. The basis and reasoning of my opinions include my education, training,
`
`and experience as an engineer, including my decades of experience in
`
`telecommunications. In conducting my analysis and forming my opinions, I have
`
`considered the materials listed below:
`
`a. U.S. Patent No. 8,265,096 to Yan-Xiu Zheng, et al., filed July 7, 2008,
`
`and issued on Sep. 11, 2012, its provisional applications, and its file
`
`history;
`
`b. Panasonic’s petition (Paper 1, “Petition”) and any materials referenced
`
`therein relevant to my analysis; specifically including the declaration
`
`of Dr. Hansen (EX1002, “Hansen”);
`
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`c. IEEE 802.11-05/1102r4, “Wireless LANs Joint Proposal: High
`
`throughput extension to the 802.11 Standard: PHY” (“Joint Proposal”)
`
`(EX1008)
`
`d. U.S. Pub. No. 2006/0072529 (“Mujtaba”) (EX1010)
`
`e. U.S. Pub. No. 2007/0204052 (“Trainin”) (EX1011)
`
`f. Relevant materials from STC.UNM v. Apple Inc., No. 1-20-cv-00351
`
`(W.D. Tex. Apr. 9, 2020), including the Claim Construction Order,
`
`ECF No. 69;
`
`g. and any other materials referenced herein.
`
`15.
`
`I have previously rendered an opinion regarding the ’096 patent in the
`
`IPR2021-00375 by Qualcomm. In conducting my analysis and forming my opinions
`
`in the context of that proceeding, I have considered these additional materials:
`
`a. Qualcomm’s Petition for Inter Partes Review, PTAB Case No.
`
`IPR2021-00375, and all its relevant technical exhibits;
`
`b. Declaration of Dr. Sumit Roy (“Roy”) supporting Qualcomm’s
`
`petition;
`
`c. U.S. Pub. No. 2009/0067377 A1 (“Talukdar”);
`
`d. U.S. Pub. No. 2007/0155387 A1 (“Li”); and
`
`e. U.S. Pub. No. 2007/0104174 A1 (“Nystrom”).
`
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`16. My opinions in this declaration are based on the understanding of a person
`
`of ordinary skill in the art at the time of the invention of the claims in the ’096 patent.
`
`17.
`
`In assessing the level of skill of a person of ordinary skill in the art, I have
`
`considered the type of problems encountered in the art, the prior solutions to those
`
`problems found in the prior art references, the rapidity with which innovations are
`
`made, the sophistication of the technology, the level of education of active workers
`
`in the field, and my own experience working with those of skill in the art at the time
`
`of the invention.
`
`18. A person of ordinary skill in the art (“POSITA”) at the time of the filing
`
`of the ’096 patent would typically have at least a MS Degree in Computer
`
`Engineering or Electrical Engineering, or equivalent work experience, along with at
`
`least 1 year of experience related specifically to wireless communications, including
`
`MIMO and OFDM.
`
`19.
`
`I am very familiar with this level of skill. Over my decades of experience,
`
`I have supervised and worked with engineers in this field having at least the level of
`
`skill identified above.
`
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`III. LEGAL FRAMEWORK
`
`A.
`20.
`
`Claim Construction
`I understand that the words of a claim are generally given their ordinary
`
`and customary meaning, that 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.
`
`21.
`
`I understand that a claim term that does not use the word “means” is
`
`presumed not to be a means-plus-function term. I understand that a term that does
`
`not use the word “means” would be construed as a means-plus-function term if it
`
`does not describe structure to a POSITA. Conversely, I understand that if a term
`
`describes structure to a POSITA, it is not a means-plus-function term.
`
`22.
`
`I understand that a patent has several components, including an abstract,
`
`drawings, a written description detailing different embodiments of the invention
`
`(i.e., the specification), and numbered claims at the end of the patent. It is the
`
`numbered claims that define metes and bounds of the properties that the patentee has
`
`the right to exclude other from infringing.
`
`B.
`23.
`
`Validity
`I understand that a patent, once issued or granted, is entitled to a
`
`presumption of validity. However, this presumption can be overcome by clear and
`
`convincing evidence to the contrary. Validity is routinely challenged post-issuance,
`
`and courts often invalidate the patent, on the ground that the patent fails to meet one
`
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`or more statutory requirements, e.g., by claiming a non-patentable subject matter,
`
`such as an abstract idea, in violation of 35 U.S.C. § 101; by being not novel and
`
`anticipated by prior art under § 102; by being obvious in view of prior art under §
`
`103; and/or lacking sufficient disclosures or being indefinite, in violation of § 112.
`
`Anticipation
`1.
`I understand that section 102 first defines “prior art” that would anticipate
`
`24.
`
`and, thus, invalidate the patent. The term “prior art” is a patent term of art for the
`
`technology that was known or used before the priority date of the patent, which is
`
`typically the filing date of the patent application. However, I understand that, to the
`
`extent a provisional patent application properly discloses and supports the claimed
`
`subject matter, the priority date of the claims is the filing date of the provisional
`
`application, which is considered the invention date. Thus, if the subject matter of
`
`the invention was already patented or described in a printed publication anywhere in
`
`the world before the invention claimed in the patent, such prior art would invalidate
`
`the patent. 35 U.S.C. § 102(a) (pre-AIA).
`
`25. Anticipation is a technical defense. A patent claim is anticipated and
`
`therefore invalid under 35 U.S.C. §102, only if: a single prior art reference discloses,
`
`either expressly or inherently, each and every element of the claimed invention
`
`arranged exactly as they are arranged in the claim. If even a single element or step
`
`recited by the claim is not disclosed in exactly the same way, arranged as in the
`
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`claim, there is no anticipation. In addition, the reference must enable one of skill in
`
`the art to practice an embodiment of the claimed invention without undue
`
`experimentation.
`
`26. For an element to be present in a reference through inherency, the evidence
`
`must be clear and convincing that the missing element is necessarily present in the
`
`thing described in the reference, and that it would be so recognized by persons of
`
`ordinary skill. That means that inherency cannot be established by probabilities or
`
`possibilities. The mere fact that a certain thing may result from a given set of
`
`circumstances is not sufficient. If, however, the disclosure is sufficient to show that
`
`the natural result flowing from the operation as taught would result in the
`
`performance of the questioned function, that disclosure could be inherent.
`
`2. Obviousness
`I understand that § 103 is broader than § 102 in a sense that § 103 forbids
`
`27.
`
`issuance of a patent even if “the invention is not identically disclosed or described
`
`as set forth in section 102, if the differences between the subject matter sought to be
`
`patented and the prior art are such that the subject matter as a whole would have
`
`been obvious at the time the invention was made to a person having ordinary skill in
`
`the art to which said subject matter pertains.” 35 U.S.C. § 103(a) (pre-AIA).
`
`28.
`
`I understand that to measure obviousness under § 103, a court determines
`
`“the scope and content of the prior art,” ascertains “differences between the prior art
`
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`and the claims at issue,” and resolves “the level of ordinary skill in the pertinent art.”
`
`Graham v. John Deere Co., 383 U.S. 1, 17 (1966). Secondary considerations such
`
`as “commercial success, long felt but unsolved needs, failure of others . . . might be
`
`utilized to give light to the circumstances surrounding the origin of the subject matter
`
`sought to be patented.” Id. at 17-18; see KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
`
`415 (2007) (“Graham set forth a broad inquiry and invited courts, where appropriate,
`
`to look at any secondary considerations that would prove instructive.”).
`
`29.
`
`It is my understanding that the information that is used to evaluate whether
`
`an invention is new and not obvious is generally referred to as “prior art.” Prior art
`
`generally includes U.S. and foreign patents and U.S. and foreign printed publications
`
`(e.g., published patent applications (before issued as a patent), books, journal
`
`publications, presentation files, posters, articles on websites, product manuals, etc.)
`
`that existed before the earliest filing date (the “effective filing date”) of the claims
`
`in the patent. A patent will be prior art if it was filed before the effective filing date
`
`of the claimed invention, while a printed publication will be prior art if it was
`
`publicly available before that date.
`
`30.
`
`I understand that, in addition to the patents and printed publications, a
`
`product used in public or on sale in the U.S. more than one year prior to the effective
`
`filing date of a patent can be prior art to that patent. I understand that a product is
`
`considered “on sale” when (i) the product embodying the invention is offered for
`
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`commercial sale, and (ii) the invention was ready for patenting. An invention is
`
`shown to be “ready for patenting” when there is proof of a reduction to practice or
`
`proof that prior to the critical date the inventor had prepared drawings or other
`
`descriptions of the invention that were sufficiently specific to enable a person skilled
`
`in the art to practice the invention.
`
`31.
`
`It is my understanding that a claimed invention is not patentable if it would
`
`have been obvious to a person of ordinary skill in the field of the invention at the
`
`time the invention was made.
`
`32.
`
`It is my understanding that the following standards govern the
`
`determination of whether a claim in a patent is obvious. I have applied these
`
`standards in my evaluation.
`
`33.
`
`It is my understanding that to find a claim in a patent obvious, one must
`
`make certain findings regarding the claimed invention and the prior art. Specifically,
`
`the obviousness question requires consideration of four factors (although not
`
`necessarily in the following order):
`
`a. the scope and content of the prior art;
`
`b. the differences between the prior art and the claims at issue;
`
`c. the knowledge of a person of ordinary skill in the pertinent art; and
`
`d. whatever objective factors indicating obviousness or non-obviousness
`
`may be present in any particular case.
`
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`34.
`
`It is my understanding that the obviousness inquiry should not be done in
`
`hindsight, but must be done using the perspective of a person of ordinary skill in the
`
`relevant art as of the effective filing date of the patent claim. The prohibition against
`
`using hindsight applies to both the invention and the identification of the problem
`
`that the invention solves.
`
`35.
`
`It is my understanding that the obviousness inquiry may also consider
`
`certain objective indicia of non-obviousness. Such objective factors indicating
`
`obviousness or non-obviousness may include: commercial success of products
`
`covered by the patent claims; a long-felt need for the invention; failed attempts by
`
`others to make the invention; copying of the invention by others in the field;
`
`unexpected results achieved by the invention; praise of the invention by the infringer
`
`or others in the field; the taking of licenses under the patent by others; expressions
`
`of surprise by experts and those skilled in the art at the making of the invention; and
`
`the patentee proceeded contrary to the accepted wisdom of the prior art.
`
`36.
`
`It is my understanding that the fact finder must determine whether potential
`
`evidence of secondary considerations is relevant. With respect to evidence offered
`
`for each secondary consideration, the fact finders must ascertain whether there is a
`
`nexus between the claimed invention and the evidence establishing the secondary
`
`consideration (commercial success, industry praise, etc.) and determine the
`
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`probative value of secondary-considerations evidence for rebutting a prima facie
`
`case of obviousness.
`
`37.
`
`I understand that the obviousness analysis requires a comparison of the
`
`properly construed claim language to the prior art on a limitation-by-limitation basis.
`
`Obviousness relies on an expansive and flexible approach using common sense.
`
`Patents may not claim nothing more than combinations of known elements driven
`
`by non-innovative factors such as market demands. Only if a person of ordinary
`
`skill in the art can implement the claimed invention as a predictable variation of a
`
`known invention without undue experimentation, it is obvious. Also, “hindsight”
`
`reconstruction cannot be used to combine references together to reach a conclusion
`
`of obviousness.
`
`38.
`
`It is my understanding that exemplary rationales that may support a
`
`conclusion of obviousness include:
`
`a. combining prior art elements according to known methods to yield
`
`predictable results;
`
`b. simple substitution of one known element for another to obtain
`
`predictable results;
`
`c. use of known techniques to improve similar devices (methods or
`
`products) in the same way;
`
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`d. applying a known technique to a known device (method or product)
`
`ready for improvement to yield predictable results;
`
`e. “obvious to try,” i.e., choosing from a finite number of identified,
`
`predictable solutions with a reasonable expectation of success;
`
`f. known work in one field of endeavor may prompt variations of it for
`
`use in either the same field or a different one based on design incentives
`
`or other market forces if the variations would have been predictable to
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`one of ordinary skill in the art; and
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`g. some teaching, suggestion, or motivation in the prior art that would
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`have led one of ordinary skill to modify the prior art reference or to
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`combine prior art reference teachings to arrive at the claimed invention.
`
`39. Thus, when considering a prior art reference for purposes of an
`
`obviousness analysis, the reference must be taken for everything it teaches.
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`40.
`
`I understand that a claim might be obvious over a single reference, without
`
`the need to combine references, if the elements of the claim that are not found
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`explicitly or inherently in the reference can be supplied by the knowledge of one
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`skilled in the art, including the common sense of one of skill in the art.
`
`41. An obviousness evaluation can also be based on a combination of multiple
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`prior art references. The prior art references themselves may provide a suggestion,
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`motivation, or reason to combine, but other times the nexus linking two or more
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`Ex. 2001 - IPR2024-00364
`Panasonic v. UNM Rainforest Innovations
`Page 19 of 62
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`prior art references is simple common sense. I further understand that an
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`obviousness analysis recognizes that market demand, rather than scientific literature,
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`often drives innovation, and that a motivation to combine references may be supplied
`
`by the direction of the marketplace.
`
`42.
`
`I understand that practical and common-sense considerations should guide
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`a proper obviousness analysis, because familiar items may have obvious uses beyond
`
`their primary purposes. A person of ordinary skill in the art looking to overcome a
`
`problem will often be able to fit the teachings of multiple publications together like
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`pieces of a puzzle. An obviousness analysis, therefore, considers the inferences and
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`creative steps that a person of ordinary skill in the art would employ under the
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`circumstances.
`
`43.
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`I understand that a particular combination may be proven obvious merely
`
`by showing that it was obvious to try the combination. For example, when there is
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`a design need or market pressure to solve a problem and there are a finite number of
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`identified, predictable solutions, a person of ordinary skill has good reason to pursue
`
`the known options within his or her technical grasp because the result is likely the
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`product not of innovation but of ordinary skill and common sense which led to a
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`reasonable expectation of success.
`
`44.
`
`It is my understanding that the combination of familiar elements according
`
`to known methods is likely to be obvious when it does no more than yield predictable
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`Ex. 2001 - IPR2024-00364
`Panasonic v. UNM Rainforest Innovations
`Page 20 of 62
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`results. When a work is available in one field of endeavor, design incentives and
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`other market forces can prompt variations of it, either in the same field or a different
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`one.
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`45.
`
`I understand that when a patent simply arranges old elements with each
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`performing the same function it had been known to perform and yields no more than
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`one of ordinary skill in the art would reasonably expect from such an arrangement,
`
`the combination is obvious. A proper obviousness analysis focuses on what was
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`known or obvious to a person of ordinary skill in the art, not just the patentee.
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`Accordingly, any need or problem known in the field of endeavor at the time of
`
`invention and addressed by the patent can provide a reason for combining the
`
`elements in the manner claimed.
`
`46.
`
`In sum, it is my understanding that prior art teachings are properly
`
`combined where a person of ordinary skill in the art, having the understanding and
`
`knowledge reflected in the prior art and motivated by the general problem facing the
`
`inventor, would have been led to make the combination of elements recited in the
`
`claims. Under this analysis, the prior art references, or any need or problem known
`
`in the relevant field at the time of the invention, can provide a reason for combining
`
`the elements of multiple prior art references in the claimed manner. But, as stated
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`previously, I understand that “hindsight” reconstruction cannot be used to combine
`
`references together to reach a conclusion of obviousness.
`
`Ex. 2001 - IPR2024-00364
`Panasonic v. UNM Rainforest Innovations
`Page 21 of 62
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`IV. THE ’096 PATENT (EX1001]
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`Technical Background
`A.
`47. The invention of the ’096 patent relates to methods for constructing frame
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`structures in orthogonal frequency-division multiple access (OFDMA) systems.
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`EX1001, 1:16-19. “Orthogonal Frequency Division Multiple Access (OFDMA) is
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`a multiple access scheme for transmitting data in different subcarriers in a channel,
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`wherein the data may come from different users and may be transmitted in disjoint
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`subsets of sub-channels in a transmission bandwidth.” Id, 1:22-24.
`
`48. The ’096 patent first describes the prior art. Id., Figs 1 (illustrating an
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`OFDMA frame structure under the IEEE 802.16 standard) and 2 (illustrating a
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`placement of guiding signals (or pilot symbols) 24-1 for time-domain and frequency
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`-domain OFDMA signals under the IEEE 802.16 standard).
`
`49.
`
`“Referring to FIG. 2, upper and lower f