UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`PANASONIC AUTOMOTIVE SYSTEMS CO., LTD.,
`Petitioner,
`v.
`UNM RAINFOREST INNOVATIONS,
`Patent Owner.
`____________________________
`
`INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,265,096 B2
`Case IPR2024-00364
`
`____________________________
`
`DECLARATION OF DR. CHRISTOPHER J. HANSEN, Ph.D.
`Ex. 1002
`
`Exhibit 1002
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`IPR2024-00364
`Page 1 of 195
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`TABLE OF CONTENTS
`
`Page
`
`INTRODUCTION .......................................................................................... 1
`I.
`BACKGROUND AND QUALIFICATIONS ................................................ 3
`II.
`III. MATERIALS REVIEWED ........................................................................... 6
`IV.
`SUMMARY OF OPINIONS .......................................................................... 8
`V.
`UNDERSTANDING OF THE LAW ............................................................. 8
`VI. CLAIM CONSTRUCTION ......................................................................... 17
`VII. LEVEL OF ORDINARY SKILL IN THE ART .......................................... 19
`VIII. BACKGROUND ON THE STATE OF THE ART ..................................... 20
`A.
`IEEE-SA Overview ............................................................................ 20
`B.
`Standards Development Process ........................................................ 23
`C.
`History of the 802.11 Standard .......................................................... 25
`D.
`Development of 802.11n .................................................................... 26
`E.
`802.11ac and 802.11ax ....................................................................... 30
`F.
`802.16m .............................................................................................. 31
`G. MIMO-OFDM .................................................................................... 33
`H.
`OFDM Symbols ................................................................................. 35
`I.
`Guard Interval ..................................................................................... 35
`J.
`Pilot Symbol ....................................................................................... 37
`K.
`Channel Estimation ............................................................................ 37
`THE CHALLENGED ’096 PATENT .......................................................... 41
`A.
`Background and ’096 Patent Specification ........................................ 41
`B.
`Overview of the ’096 Patent Prosecution History ............................. 43
`C.
`Overview of ITRI’s Infringement Action in 2015 ............................. 45
`D.
`Overview of Patent Owner’s Infringement Contentions in UNM
`Rainforest Innovations f/k/a STC.UNM v. Toyota Motor North
`America, Inc. et al, 2-23-cv-00424 (E.D. Tex) .................................. 46
`Overview of Final Written Decision in Inter Partes Review No.
`2021-00734 ......................................................................................... 53
`
`IX.
`
`E.
`
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`X.
`
`OVERVIEW OF THE PRIOR ART REFERENCES .................................. 55
`A.
`Joint Proposal ..................................................................................... 55
`B. Mujtaba ............................................................................................... 58
`C.
`Trainin ................................................................................................ 61
`XI. GROUND 1: JOINT PROPOSAL ANTICIPATES CLAIMS 8, 44-47
`AND 50 ......................................................................................................... 65
`A.
`Claim 8 ............................................................................................... 65
`B.
`Claim 44 ............................................................................................. 81
`C.
`Claim 45 ............................................................................................. 88
`D.
`Claim 46 ............................................................................................. 94
`E.
`Claim 47 ............................................................................................. 97
`F.
`Claim 50 ............................................................................................. 99
`XII. GROUND 2: JOINT PROPOSAL RENDERS CLAIM 49 OBVIOUS
`IN VIEW OF TRAININ ............................................................................. 100
`A.
`Claim 49 ........................................................................................... 100
`XIII. GROUND 3: MUJTABA ANTICIPATES CLAIM 8 .............................. 108
`A.
`Claim 8 ............................................................................................. 108
`XIV. GROUND 4: MUJTABA RENDERS CLAIMS 8, 44-47 AND 49-50
`OBVIOUS IN VIEW OF TRAININ .......................................................... 120
`A.
`Claim 8 ............................................................................................. 120
`B.
`Claim 44 ........................................................................................... 129
`C.
`Claim 45 ........................................................................................... 139
`D.
`Claim 46 ........................................................................................... 149
`E.
`Claim 47 ........................................................................................... 159
`F.
`Claim 49 ........................................................................................... 166
`G.
`Claim 50 ........................................................................................... 174
`XV. SECONDARY CONSIDERATION .......................................................... 179
`XVI. CONCLUSION ........................................................................................... 180
`
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`Petition for Inter Partes Review of U.S. Pat. 8,265,096
`
`I.
`
`INTRODUCTION
`1.
`My name is Christopher J. Hansen. I have been retained by counsel
`
`for Petitioner, Panasonic Automotive Systems Co., Ltd., as an expert witness in
`
`this inter partes review to examine whether claims 8, 44-47, and 49-50 of U.S.
`
`Patent No. 8,265,096 (“the ’096 Patent) are patentable over certain prior art.
`
`2.
`
`I have personal knowledge of all the facts set forth herein, and if
`
`called to testify at any hearing in this inter partes review, I would competently
`
`testify and verify that testimony contained herein.
`
`3.
`
`I am being compensated at my hourly rate of $500 per hour. I am also
`
`being reimbursed for out-of-pocket expenses. My compensation does not depend
`
`in any way on the outcome of this proceeding or the particular opinions I express,
`
`or the testimony I give.
`
`4.
`
`I expect to be available for deposition and to testify at the evidentiary
`
`hearing in this inter partes review to the extent required.
`
`5.
`
`This declaration contains my conclusions and a summary of my
`
`analysis including a summary of my conclusions; an overview of my qualifications
`
`as an expert; an overview of the scope and terms of my engagement for this
`
`declaration; an overview of the materials I have considered in arriving at my
`
`conclusions; an overview of the terminology and legal principles that I applied in
`
`my analysis; an overview of the technical background of the subject matter; an
`
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`overview of ’096 Patent; an analysis of the level of ordinary skill in the art related
`
`to the ’096 Patent; an analysis of the asserted references; and a patentability
`
`analysis of the challenged claims.
`
`6.
`
`I have been informed that Patent Owner UNM Rainforest Innovations
`
`(formerly STC.UNM) has asserted the ’096 Patent in the following lawsuits: UNM
`
`Rainforest Innovations f/k/a STC.UNM v. Toyota Motor North America, Inc. et al,
`
`2-23-cv-00424 (E.D. Tex.); UNM Rainforest Innovations v. Zyxel Commc’ns
`
`Corp., 6:20-cv-00522 (W.D. Tex.); UNM Rainforest Innovations v. Dell Techs.,
`
`Inc., 6:20-cv-00468 (W.D. Tex.); UNM Rainforest Innovations v. ASUSTek
`
`Comput., Inc., 6:20-cv-00142 (W.D. Tex.); UNM Rainforest Innovations v. D-Link
`
`Corp., 6:20-cv-00143 (W.D. Tex.); UNM Rainforest Innovations v. Apple Inc.,
`
`1:20-cv-00351 (W.D. Tex.); UNM Rainforest Innovations v. TP-Link Techs. Co.,
`
`Ltd., 6:19-cv-00262 (W.D. Tex.).
`
`7.
`
`This declaration is based on information currently available to me. I
`
`intend to continue my investigation and study, which may include a review of
`
`documents and information that may yet be produced, as well as deposition
`
`testimony from depositions for which transcripts are not yet available or that may
`
`yet be taken in this review. Therefore, I expressly reserve the right to expand or
`
`modify my opinions as my investigation and study continue, and to supplement my
`
`opinions in response to any additional information that becomes available to me,
`
`-2-
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`any matters raised by Patent Owner and/or other opinions provided by Patent
`
`Owner’s expert(s), or in light of any relevant orders from the Patent Trial and
`
`Appeal Board or other authoritative body.
`
`II.
`
`BACKGROUND AND QUALIFICATIONS
`8.
`I received a B.S. in electrical engineering from Rensselaer
`
`Polytechnic Institute in 1987. I received an M.S. in electrical engineering from
`
`University of Massachusetts, Amherst in 1989. I received a Ph.D. in electrical
`
`engineering from University of California, Los Angeles in 1997.
`
`9.
`
`I have over 25 years of experience working with wireless
`
`communications and IEEE standards and over 15 years of experience working in
`
`802.11 WLAN chipsets and cellular base-station systems development.
`
`10. A copy of my curriculum vitae listing my full employment history is
`
`included as Appendix A. I will briefly summarize aspects of my experience below.
`
`11.
`
`From 1989 through 1992, my work focused on radio frequency (RF)
`
`and microwave systems and circuit development for radar systems and cellular
`
`(mobile) radio. This work included development of feed-forward amplifiers used
`
`in commercial base station equipment.
`
`12.
`
`From 1997 through 1999, I was employed by two Silicon Valley
`
`startup companies developing advanced digital communications technology for
`
`-3-
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`asymmetrical digital subscriber line (ADSL) and high bit-rate digital subscriber
`
`line (HDSL2) systems.
`
`13.
`
`From 2000 through 2012, I was employed at Broadcom Corporation,
`
`where I served as system engineer for the IEEE 802.11a/b/g wireless local area
`
`network chipsets including analysis of radio and baseband DSP architectures for
`
`the physical layer design, and then project manager and lead system engineer for
`
`the IEEE 802.11n proposal to the IEEE at Broadcom. My responsibilities focused
`
`on technology developments and contributions to a number of the IEEE 802.11
`
`standards, and in particular the IEEE 802.11n standard which incorporated a
`
`MIMO-OFDM physical layer and enhanced MAC layer for higher throughput
`
`wireless networks. My work covered many topics including preamble design,
`
`advanced channel coding, channel estimation, and multiple antenna beamforming.
`
`14.
`
`From June 2012 through July 2013, I was employed at Apple Inc.,
`
`where I served as senior wireless system architect for analysis of the IEEE.11
`
`wireless networks for iOS products.
`
`15.
`
`From August 2013 to present, I have worked as a self-employed
`
`consultant while serving out my leadership role at the IEEE.
`
`16.
`
`I am currently President of Covariant Corporation, which is a
`
`consulting firm that provides expertise on the IEEE 802.11 standards and product
`
`development.
`
`-4-
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`17.
`
`I am named inventor on more than 125 issued patents, including many
`
`standard essential patents for the IEEE 802.11 standards.
`
`18.
`
`I have been a member of the Institute of Electrical and Electronics
`
`Engineers (“IEEE”) since 1989. I became a senior member of the IEEE since in
`
`2011. I began participating in the IEEE’s standards-setting process in January
`
`2000.
`
`19. During my 12 years working for Broadcom, I was one of Broadcom’s
`
`lead representatives in the IEEE 802.11 standards-setting process. Specifically, I
`
`took on a number of significant roles during the development of the IEEE 802.11h,
`
`IEEE 802.11n, and the IEEE 802.11ad amendment. For IEEE 802.11n, these roles
`
`included making multiple technical contributions and attending all meetings of the
`
`study group responsible for defining the scope of the standard and all meetings of
`
`the task group responsible for writing the standard.
`
`20.
`
`I was significantly involved in the development of IEEE 802.11n as
`
`part of my duties at Broadcom. I attended all meetings of the High Throughput
`
`Study Group, which was responsible for defining the scope of IEEE 802.11n, and
`
`all meetings of the Task Group for 802.11n (TGn), which was responsible for
`
`writing the IEEE 802.11n specifications.
`
`21.
`
`I was largely responsible for defining the Medium Access Controller
`
`(MAC) portion and the physical layer (PHY) of Broadcom’s IEEE 802.11n
`
`-5-
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`contributions as well as technical simulations that were used to justify the design
`
`choices used in those contributions.
`
`22.
`
`In 2005, a Joint Proposal team was formed after none of the
`
`competing proposals for IEEE 802.11n received enough “yes” votes during the
`
`balloting process to move forward. The Joint Proposal group was responsible for
`
`developing a compromise proposal that included elements of three of the
`
`competing proposals that had failed. These three proposals were the TGn Sync
`
`proposal, another proposal from a group called WWiSE, and a proposal from a
`
`group including Mitsubishi and Motorola (MitMot).
`
`23.
`
`In January 2006, the IEEE Task Group n (“TGn”) voted unanimously
`
`to confirm selection of the Joint Proposal for high throughput wireless local area
`
`networks. As a result, the Joint Proposal became part of the IEEE 802.11n
`
`standard, which was published in 2009.
`
`III. MATERIALS REVIEWED
`24.
`In reaching the conclusions described in this declaration, I have relied
`
`on the documents and materials recited herein as well as those identified in this
`
`declaration, including the ’096 Patent (Ex. 1001), the prosecution history of the
`
`’096 Patent, the prior art references, and information discussed and any other
`
`references specifically identified in this declaration, including the materials
`
`identified in the chart below.
`
`-6-
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`Ex. 1006
`
`Ex. 1007
`Ex. 1008
`
`Ex. 1009
`
`Ex. 1010
`Ex. 1011
`Ex. 1012
`Ex. 1013
`Ex. 1014
`
`Exhibit
`Ex. 1001
`Ex. 1003
`Ex. 1004
`Ex. 1005
`
`Description
`U.S. Patent No. 8,265,096 (the “’096 Patent”)
`U.S. Provisional App. No. 60/929
`Excerpt of the ’096 Patent Prosecution History
`Claim Construction Order in STC.UNM v. Apple Inc., No. 1-20-cv-
`00351 (W.D. Tex. Apr. 9, 2020), ECF No. 69
`Patent Owner’s Motion to Amend in Inter Partes Review No.
`2021-00743
`Final Written Decision in Inter Partes Review No. 2021-00743
`IEEE P802.11 Wireless LANs Joint Proposal: High throughput
`extension to the 802.11 Standard: PHY, IEEE 802.11-05/1102r4
`(Jan. 13, 2006) (“Joint Proposal”)
`IEEE P802.11 Wireless LANs [Minutes of High Throughput Task
`Group .11n Session], IEEE 802.11-05/0037r0 (Jan. 16, 2006)
`U.S. Pub. No. 2006/0072529 A1 (“Mujtaba”)
`U.S. Pub. No. 2007/0204052 A1 (“Trainin”)
`U.S. Pub. No. 2006/0067415 A1 (“Mujtaba II”)
`U.S. Pub. No. 2006/0146867 A1 (“Lee”)
`IEEE Std 802.11a-1999 Part 11: Wireless LAN Medium Access
`Control (MAC) and Physical Layer (PHY) specifications, ISO/IEC
`8802-11:1999/Amd 1:2000(E)
`Declaration of Dr. James L. Lansford, Ph.D.
`Ex. 1015
`U.S. Pub. No. 2005/0233709A1 (“Gardner”)
`Ex. 1016
`U.S. Patent No. 7,274,652 (“Webster”)
`Ex. 1017
`U.S. Pub. No. 2007/0104174 (“Nystrom”)
`Ex. 1018
`Ex. 1019 Mujtaba, et al., IEEE 802.11-05/786r0, “TGn Sync, WWiSE, and
`Mitmot Closing Report”, presentation submission, submitted and
`publicly available on July 21, 2005.
`U.S. Pub. No. 2008/0095195A1 (“Ahmadi”)
`U.S. Pub. No. 20070155387A1 (“Li”)
`Patent Owner’s Complaint in UNM Rainforest Innovations f/k/a
`STC.UNM v. Toyota Motor North America, Inc. et al, 2-23-cv-
`00424 (E.D. Tex.)
`Draft IEEE 802.16m Requirements
`Ex. 1023
`Ex. 1024 Work Plan for Development of IEEE P802.16m Draft Standard
`& IMT-Advanced Submission
`Extract of ITRI’s Submission to TGn
`Partial Proposal for 802.11n: ITRI Preamble Specification
`
`Ex. 1020
`Ex. 1021
`Ex. 1022
`
`Ex. 1025
`Ex. 1026
`
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`Ex. 1027
`
`Ex. 1028
`
`Ex. 1029
`
`Ex. 1030
`Ex. 1031
`Ex. 1032
`Ex. 1033
`
`ITRI’s complaint in Industrial Technology Research Institute v. LG
`Electronics, Inc. et al, 2-15-cv-00552 (E.D. Tex.)
`Patent Owner’s Infringement Contentions in UNM Rainforest
`Innovations f/k/a STC.UNM v. Toyota Motor North America, Inc. et
`al, 2-23-cv-00424 (E.D. Tex.)
`Exemplary Exhibit to Patent Owner’s Infringement Contentions in
`UNM Rainforest Innovations f/k/a STC.UNM v. Toyota Motor
`North America, Inc. et al, 2-23-cv-00424 (E.D. Tex.)
`[Reserved]
`[Reserved]
`U.S. Pub. No. 2005/0159120 (“Kim”)
`Yang Xiao, IEEE 802.11n: Enhancement for Higher Throughput in
`Wireless LANs publicly available in December 2005 (“Yang”).
`SUMMARY OF OPINIONS
`
`IV.
`
`25. Claims 8, 44-47 and 50 of the ’096 Patent are unpatentable as being
`
`anticipated by Joint Proposal.
`
`26. Claim 49 is unpatentable as obvious by Joint Proposal and Trainin.
`
`27. Claim 8 is unpatentable as being anticipated by Mujtaba.
`
`28. Claims 8, 44-47 and 49-50 are unpatentable as obvious by Mujtaba
`
`and Trainin.
`
`V.
`
`UNDERSTANDING OF THE LAW
`
`29.
`
`I am not a legal expert. In forming my opinions, I have been informed
`
`of and applied the legal standards as follows. I understand that the legal standards
`
`relating to anticipation and obviousness apply to the ’096 Patent based on its
`
`effective filing date of July 7, 2008. My opinions herein would not change if the
`
`-8-
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`’096 Patent were determined to be entitled to claim priority to the date of filing of
`
`either provisional application filed on July 12, 2007 or September 17, 2007.
`
`30.
`
`I understand that a patent claim is invalid if the claimed invention is
`
`not new. For a claim to be invalid on the basis of anticipation because it is not
`
`new, all of its elements must be present, either expressly or inherently, in a single
`
`previous device or method, or described, either expressly or inherently, in a single
`
`previous publication or patent.
`
`31.
`
`I understand that the description in a reference does not have to be in
`
`the same words as the claim, but all the requirements of the claim must be there,
`
`either stated expressly or necessarily implied or inherent to one of ordinary skill in
`
`the field of technology of the patent at the time of the invention, so that someone of
`
`ordinary skill in the field of technology of the patent looking at that one reference
`
`would be able to make and use the claimed invention. I further understand that to
`
`be necessarily implied or inherent, the claim element must be a necessary part of
`
`the reference that is not expressly discloses. Merely being one option is not
`
`sufficient for a claim element to be necessarily implied or inherent to a person of
`
`ordinary skill in the art (“POSA”).
`
`32.
`
`I have been informed that in relying upon the theory of inherency,
`
`there must be a basis in fact and/or technical reasoning to reasonably support the
`
`-9-
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`determination that the allegedly inherent characteristic necessarily flows from the
`
`teachings of the applied prior art.
`
`33.
`
`I have been informed that a patent claim is invalid under 35 U.S.C. §
`
`102(a) if the invention defined by the claim was known or used by others in the
`
`United States or was patented or described in a printed publication, such as a
`
`journal, magazine or newspaper article, anywhere in the world before the
`
`applicants’ invention date. I understand that a printed publication, such as an
`
`article published in a magazine or trade publication, constitutes prior art to a
`
`claimed invention under 35 U.S.C. § 102(a) if the publication takes place prior to
`
`the date of invention. I understand that a U.S. patent constitutes prior art to a
`
`claimed invention under 35 U.S.C. § 102(a) if the date of issuance of the patent is
`
`before the date of invention.
`
`34.
`
`In addition, I have been informed that a patent claim is invalid under
`
`35 U.S.C. § 102(b) if the invention defined by the claim was patented or described
`
`in a printed publication anywhere in the world or was in public use or on sale in the
`
`United States more than one year before the effective filing date/priority date of the
`
`patent in the United States. I understand that a U.S. or foreign patent constitutes
`
`prior art to a claimed invention under 35 U.S.C. § 102(b) if the date of issuance of
`
`the patent is more than one year before the filing date of a patent application
`
`claiming the invention. I understand that a printed publication, such as an article
`
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`published in a magazine or trade publication, constitutes prior art to a claimed
`
`invention under 35 U.S.C. § 102(b) if the publication takes place more than one
`
`year before the filing date of a patent application claiming the invention.
`
`35.
`
`I have also been informed that a patent claim is invalid under 35
`
`U.S.C. § 102(e) if the invention defined by the claim was described in a patent by
`
`another inventor that was filed in the United States before the applicants’ invention
`
`date. I understand that a U.S. patent constitutes prior art to a claimed invention
`
`under 35 U.S.C. § 102(e) if the patent issues from an application that was filed
`
`before the invention by the applicants.
`
`36.
`
`I understand that a patent claim is “obvious” and therefore invalid
`
`when the differences between the claimed subject matter 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 POSA to which the subject matter pertains.
`
`37.
`
`In making an obviousness determination, I understand that there are
`
`several factors to consider: (1) the scope and content of the prior art; (2) the level
`
`of ordinary skill in the art at the time the invention was made; (3) the differences
`
`between the claimed invention and the prior art, if any, and (4) objective
`
`considerations, if any exist, such as any commercial success, copying, prior failure
`
`by others, licenses, longstanding need, and unexpected results.
`
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`38.
`
`I understand that prior art used to show that a claimed invention is
`
`obvious must be “analogous art.” Prior art is analogous art to the claimed
`
`invention if (1) it is from the same field of endeavor as the claimed invention (even
`
`if it addresses a different problem) or (2) the reference is reasonably pertinent to
`
`the problem faced by the inventor (even if it is not from the same field of endeavor
`
`as the claimed invention).
`
`39.
`
`I have been informed and understand that the U.S. Supreme Court has
`
`recognized several rationales for combining references or modifying a reference to
`
`show obviousness of claimed subject matter. Some of these rationales include the
`
`following: (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 a known technique to improve a similar device
`
`(method, or product) in the same way; (d) applying a known technique to a known
`
`device (method, or product) ready for improvement to yield predictable results; (e)
`
`choosing from a finite number of identified, predictable solutions, with a
`
`reasonable expectation of success; and (f) some teaching, suggestion, or motivation
`
`in the prior art that would have led a POSA to modify the prior art reference or to
`
`combine prior art reference teachings to arrive at the claimed invention.
`
`40. Also, I have been informed and understand that obviousness does not
`
`require physical combination/bodily incorporation, but rather consideration of what
`
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`the combined teachings would have suggested to a POSA at the time of the alleged
`
`invention.
`
`41.
`
`I understand that it is improper to engage in hindsight when trying to
`
`determine the obviousness of a patent claim. I understand that the obviousness
`
`inquiry must be conducted from the standpoint of a POSA at the time the claimed
`
`invention was made. What is known today, and what is learned from the teachings
`
`and disclosures of the patent itself containing the claim under analysis, should not
`
`be considered.
`
`42.
`
`I have been informed that in order to rely on inherency to establish the
`
`existence of a claim limitation in the prior art in an obviousness analysis, the
`
`limitation at issue necessarily must be present, or the natural result of the
`
`combination of elements explicitly disclosed by the prior art.
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`43.
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`I have been informed that various “secondary considerations”
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`(sometimes referred to as objective indicia of non-obviousness) may support a
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`determination of non-obviousness and that such secondary considerations must be
`
`considered as part of an obviousness analysis. I have been informed that
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`secondary considerations of nonobviousness may include:
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` commercial success of a product due to the merits of the claimed
`
`invention;
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` a long felt need for the solution provided by the claimed invention;
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`Panasonic v. UNM
`IPR2024-00364
`Page 16 of 195
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` unsuccessful attempts by others to find the solution provided by the
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`claimed invention;
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` copying of the claimed invention by others;
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` unexpected and superior results from the claimed invention; and
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` acceptance by others of the claimed invention as shown by praise from
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`others in the field or from the licensing of the claimed invention.
`
`44.
`
`I understand that in order for such “secondary considerations”
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`evidence to be relevant to the obviousness inquiry, there must be a relationship or
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`“nexus” between the advantages and features of the claimed invention and the
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`evidence of secondary considerations.
`
`45.
`
`I understand that if a claim element is not obvious, then the claims
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`that depend from it are not obvious.
`
`46.
`
`I have been advised that in an Inter Partes Review the claim terms
`
`generally should be given their ordinary and customary meaning as a POSA would
`
`have understood them at the time of the invention and in light of the patent and its
`
`prosecution history. Furthermore, I have been instructed that a claim’s plain
`
`language can help guide the interpretation of the claim terms in question, and the
`
`manner in which a claim term is used in a claim may be informative of its
`
`meaning.
`
`-14-
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`Panasonic v. UNM
`IPR2024-00364
`Page 17 of 195
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`47.
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`Further, I have been informed that in an Inter Partes Review
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`proceeding, only claim terms that are actually in dispute need be construed. Thus,
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`terms that are not in dispute, or ones for which alternative constructions would not
`
`render a different finding, do not need to be construed.
`
`48.
`
`I have also been advised that the claim terms being construed must be
`
`construed in light of, and consistent with, the intrinsic evidence of the patent. I
`
`understand that a patent’s intrinsic evidence includes the patent’s prosecution
`
`history (which includes the prior art considered by the Examiner(s)), the patent’s
`
`claims, and the patent’s written description as given in the specification of the
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`patent.
`
`49.
`
`I have also been advised that when the meaning of a patent’s claim
`
`term is disputed, the specification of the patent itself is the best guide to the
`
`meaning of that claim term. I understand that while embodiments given by the
`
`specification can help understand the meaning of claim terms, preferred
`
`embodiments and other examples given in the specification should not further limit
`
`the claims by being read into the claim terms being construed.
`
`50.
`
`I also understand that an inventor may act as his or her own
`
`lexicographer by specifically defining his or her own terms within the specification
`
`such that they then possess a specific meaning that can be different than the
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`meaning they would otherwise have. I also understand that such an inventor can
`
`-15-
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`Panasonic v. UNM
`IPR2024-00364
`Page 18 of 195
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`overcome the plain and ordinary meaning of a given claim term if he or she clearly
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`and explicitly defines or redefines a claim term.
`
`51.
`
`I have also been advised that after the patent’s claims and
`
`specification, the next critical source of evidence regarding the meaning of a
`
`patent’s claim terms comes from the patent’s prosecution history. I understand that
`
`the prosecution history contains remarks made by the applicant during prosecution
`
`of the application that issues as the patent and those remarks may act to define,
`
`redefine, disclaim, or limit the meaning of a claim term, and that if a patentee made
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`statements during prosecution that so limits the scope of a claim term, it is
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`improper for a patent owner to regain the scope given up during prosecution that
`
`leads to the issuance of the patent.
`
`52.
`
`I have also been advised that in addition to the intrinsic evidence
`
`discussed above, extrinsic evidence may also be considered when construing
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`claims, although it is generally not as significant as the intrinsic record itself when
`
`understanding the meaning of a claim term. It is my understanding that extrinsic
`
`evidence is any relevant evidence that would inform the understanding of the claim
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`terms such as textbooks, dictionaries, expert testimony, treatises, or other like
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`material.
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`Panasonic v. UNM
`IPR2024-00364
`Page 19 of 195
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`VI. CLAIM CONSTRUCTION
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`53.
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`I have been informed that for purposes of this Inter Partes Review,
`
`the standard for claim construction is the same as the standard used in federal
`
`district court litigation: claim terms should generally be given their ordinary and
`
`customary meaning as understood by a POSA at the time of the invention and after
`
`reading the patent and its prosecution history.
`
`54.
`
`I have been informed that the following terms of the ’096 Patent were
`
`construed in a district court case between Patent Owner and Apple:
`
` “frame structure” (claims 1, 8): “a single structure comprising one or
`
`more frames, wherein each frame may have one or more subframes”;
`
` “symbol” (claims 1, 8): Plain-and-ordinary meaning, wherein the plain-
`
`and-ordinary meaning means “a transmissible unit of information”;
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` “at least one of […] and […]” (claims 1, 2, 3, 4, 6, 8): “[…] and/or […]”;
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` “symbol period” (claim 1): “the time it takes to transmit one symbol”;
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`“pilot symbols that are denser than” (claim 8): “more pilot symbols per
`
`unit time than, wherein a unit time is the symbol period of the first
`
`communication system”;
`
` “communication system” (claims 1, 8): Plain-and-ordinary meaning,
`
`where the plain-and-ordinary meaning is “a combination of hardware and
`
`-17-
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`Panasonic v. UNM
`IPR2024-00364
`Page 20 of 195
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`software that transmits and receives data according to one or more
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`communications standards”;
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` “wherein the first communication system’s symbols and the second
`
`communication system’s symbols co-exist in one transmission scheme”
`
`(claims 1, 8): Plain-and-ordinary meaning where the plain-and-ordinary
`
`meaning is “wherein symbols of the first communication system and
`
`symbols of the second communication system exist together in one
`
`transmission scheme”;
`
` “data” / “non-data” (claims 1, 2, 3, 6, 7, 8): Plain-and-ordinary meaning
`
`(both); and
`
` “support higher mobility than” (claim 1): “support higher relative
`
`velocity between a transmitter and a receiver than.” (Claim Construction
`
`Order in STC.UNM v. Apple Inc., No. 1-20-cv-00351 (W.D. Tex.