`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________
`
`
`DELL INC. and DELL TECHNOLOGIES, INC.,
`Petitioners
`
`v.
`AX Wireless.
`Patent Owner.
`
`
`___________________
`
`IPR2024-00685
`U.S. Patent 10,079,707
`_____________________
`
`DECLARATION OF THOMAS LAPORTA, PH.D.
`IN SUPPORT OF INTER PARTES REVIEW OF U.S. PATENT 10,079,707
`
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`DELL-1003
`10,079,707
`
`

`

`TABLE OF CONTENTS
`
`I.
`QUALIFICATIONS ........................................................................ 2
`II. UNDERSTANDING OF RELEVANT LEGAL PRINCIPLES .............. 8
`III.
`’707 PATENT ................................................................................11
`A. Overview of ’707 Patent ................................................................11
`B. Technical Background...................................................................16
`1. Communications System Overview ............................................17
`2. Physical Medium .....................................................................19
`3.
`ITU G.hn ................................................................................21
`a. G.9960 ...............................................................................22
`(i) Physical Coding Sub-Layer (PCS) .......................................24
`(ii) Physical Medium Attachment (PMA) Sub-Layer ...................25
`(iii) Physical Medium Dependent (PMD) sub-layer......................26
`b. “G.hn: Extended PHY Frame Header” Contribution
`(July 2009) .........................................................................27
`“G.hn: Using Two Symbols for the Header of a PHY
`frame on Coax” Contribution ................................................28
`IEEE 802 ................................................................................30
`a. OFDM PHY (802.11a) .........................................................30
`(i) Operating Channels ...........................................................30
`(ii) Physical Layer ..................................................................31
`b.
`IEEE 802.11n......................................................................33
`C. Level Of Ordinary Skill In The Art .................................................34
`D. Claim Construction .......................................................................35
`IV. GROUND 1: THE COMBINATION OF HANSEN AND JULY
`2005 WWISE. ................................................................................35
`A. Overview of the Combination.........................................................35
`
`4.
`
`c.
`
`- i -
`
`

`

`B.
`
`Page
`1. Hansen ...................................................................................35
`a. TGn Sync Proposal ..............................................................38
`b.
`January 2005 WWiSE Proposal .............................................42
`c. Hansen’s “Compromise” Greenfield PPDU.............................44
`July 2005 WWiSE....................................................................45
`2.
`3. Motivation to Combine .............................................................50
`Independent Claim 1 .....................................................................60
`1. Preamble.................................................................................62
`2.
`“Wireless OFDM Receiver” Limitations......................................64
`a. First and Second Packet Types ..............................................64
`b. “Wireless OFDM Receiver” ..................................................67
`“Packet Type” Limitations ........................................................71
`a.
`“First Packet Type”..............................................................72
`(i) Content ............................................................................72
`(ii) Order of Transmission/Reception ........................................79
`b. “Second Packet Type” ..........................................................82
`(i) Content ............................................................................82
`(ii) Order of Transmission/Reception ........................................86
`“Demodulator’ Limitations .......................................................91
`a.
`“First Packet Type” - Order of Symbol Demodulation ..............94
`b. “Second Packet Type” - Order of Symbol Demodulation ..........96
`c.
`“Received in a Different Order” Limitations [1K]/[1L] .............99
`Independent Claim 9 ................................................................... 103
`C.
`D. Dependent Claims ...................................................................... 107
`
`3.
`
`4.
`
`TABLE OF CONTENTS
`(continued)
`
`- ii -
`
`

`

`TABLE OF CONTENTS
`(continued)
`
`Page
`1. Claims 2, 3, 10, and 11 ........................................................... 107
`2. Claims 5, 13 .......................................................................... 110
`3. Claims 7 and 8 ....................................................................... 111
`V. GROUND 2: THE COMBINATION OF HANSEN, JULY 2005
`WWISE, AND CHOI RENDERS CLAIMS 1-3, 5, 7-11, AND
`13 OBVIOUS............................................................................... 112
`A. Overview of the Combination....................................................... 113
`1. Choi ..................................................................................... 113
`2. Motivation to Combine ........................................................... 116
`Independent Claim 1 ................................................................... 119
`B.
`Independent Claim 9 ................................................................... 121
`C.
`D. Dependent Claims ...................................................................... 121
`VI. CONCLUSION ............................................................................ 122
`
`- iii -
`
`

`

`Exhibit
`1001
`1002
`1003
`
`1004
`1005
`1006
`
`1007
`1008
`1009
`1010
`1011
`1012
`
`1013
`
`1014
`1015
`
`1016
`
`U.S. Patent 10,079,707
`IPR2024-00685
`
`EXHIBIT LIST
`
`Reference
`
`U.S. Patent 10,079,707
`File History of the ’707 patent
`Declaration of Thomas LaPorta, Ph.D. in Support of Inter Partes
`Review of U.S. Patent 10,079,707
`Curriculum Vitae of Dr. Thomas LaPorta
`U.S. Patent Publication 2006/0182017 to Hansen, et al (“Hansen”)
`IEEE 802.11-05/0149r5, “WWiSE Proposal: High Throughput
`Extension to the 802.11 Standard” to Kose, et al, uploaded and
`publicly available on July 9, 2005 (“July 2005 WWiSE”)
`Declaration of James L. Lansford, Ph.D.
`U.S. Patent Publication 2005/0243774 to Choi, et al (“Choi”)
`U.S. Provisional Application 61/235,909 (“the ’707 Provisional”)
`U.S. Patent 8,737,189 to Hansen, et al (“Hansen Patent’)
`U.S. Provisional Application 60/653,429 (“Hansen Provisional”)
`IEEE 802.11-04/0889r3, “TGn Sync Proposal Technical
`Specification” to Mujtaba, uploaded and publicly available on
`January 20, 2005
`IEEE 802.11-04/0886r6, “WWiSE Proposal: High Throughput
`Extension to the 802.11 Standard” to Hansen, et al, uploaded and
`publicly available on January 6, 2005 (“January 2005 WWiSE”)
`U.S. Patent Publication 2007/0115802 to Yu (“Yu”)
`IEEE Std. 802.11a-1999, “Part 11: Wireless LAN Medium Access
`Control (MAC) and Physical Layer (PHY) Specifications: High-
`Speed Physical Layer in the 5 GHz Band”, approved September 16,
`1999 (“802.11a”)
`Declaration of David Ringle for 802.11a-1999 - IEEE Standard for
`Telecommunications and Information Exchange Between Systems –
`LAN/MAN Specific Requirements - Part 11: Wireless Medium
`Access Control (MAC) and physical layer (PHY) specifications:
`
`- iv -
`
`

`

`
`
`Exhibit
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`1027
`
`1028
`
`U.S. Patent 10.079,707
`IPR2024-00685
`
`Reference
`High-Speed Physical Layer in the 5 GHz Band, date of publication
`December 30, 1999
`IEEE Std. 802.11n-2009, “Part 11: Wireless LAN Medium Access
`Control (MAC) and Physical Layer (PHY) Specifications:
`Amendment 5: Enhancements for Higher Throughput” (“802.11n”)
`Editor for G.9960, “ITU-T Recommendation G.9960 Next
`Generation Wire-line Based Home Networking Transceivers-
`Foundation”, ITU-T SG15/Q4, January 2009, as filed in file wrapper
`of the ’707 patent
`Intellon Corporation, “G.hn: Extended PHY frame header,” ITU-T
`SG15/Q4, 09XC-119, Xian, China, July 2009, as filed in file wrapper
`of the ’707 patent
`CopperGate Communication, “G.hn: Using Two Symbols for the
`Header of a PHY frame on Coax,” ITU-T SG15/Q4, 09XC-100,
`Xian, China July 2009, as filed in file wrapper of the ’707 patent
`Lörincz, et al, “Physical Layer Analysis of Emerging IEEE 802.11n
`WLAN Standard”, 8th International Conference Advanced
`Communication Technology (February 20-22, 2006); added to IEEE
`Xplore May 8, 2006
`Van Nee, et al., “OFDM for Wireless Multimedia Communications”,
`Artech House Publishers (2000)
`Bahai, et al., “Multi-Carrier Digital Communications Theory and
`Applications of OFDM”, Springer (2004)
`Tse, et al., “Fundamentals of Wireless Communication”, Cambridge
`University (2005)
`Heiskala, et al., “OFDM Wireless LANs: A Theoretical and Practical
`Guide”, Sams Publishing (2002)
`RESERVED
`Cox, “Stage Set for Compromise on IEEE High-Speed Wireless”,
`Network World (March 21, 2005)
`Reardon, “New Wi-Fi Standard Takes the Slow Road”, CNET (May
`20, 2005)
`
`- v -
`
`

`

`
`
`U.S. Patent 10.079,707
`IPR2024-00685
`
`1030
`
`1031
`
`1032
`
`1033
`1034
`
`1035
`
`1036
`
`Reference
`Exhibit
`1029 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.
`Coffey, IEEE 802.11-05/0737r0, “WWiSE IEEE 802.11n Proposal”,
`presentation submission, submitted and publicly available on July 9,
`2005
`Gast, “802.11 Wireless Networks: The Definitive Guide”, O’Reilly
`(2002)
`Infringement Contents with Appendices served in AX Wireless LLC v.
`Dell Inc. et al., and AX Wireless LLC v. HP Inc., U.S. District Court
`Eastern District of Texas, Case Numbers 2:22-cv-00277 and 2:22-cv-
`00279, November 3, 2022
`U.S. Patent 7,415,074 (Appendix C to DELL-1007)
`Stephens, “802.11 ‘Decrypted’”, ACM SIGCOMM Computer
`Communication Review, Vol. 35, No. 2 (April 2005) (Appendix D to
`Lansford Declaration, DELL-1007).
`Kay, “Sidebar: The Battle for 11n”, ComputerWorld (March 13,
`2006)
`“‘WWiSE’ Consortium, Motorola Team on Proposal for IEEE
`802.11n”, Wireless Design Online (February 24, 2005)
`1037 WWiSE Industry Organization Press Release, “‘WWiSE’ Consortium
`and Motorola Team to Offer Enhanced Proposal for IEEE 802.11n”
`(February 24, 2005); archived on April 6, 2005 at
`https://web.archive.org/web/20050406073808/http://www.wwise.org/
`pressreleasefeb23.htm.
`IEEE 802.11-04/422r4, “New Participant Orientation”, presentation
`submission (July 2004) (Appendix A to Lansford Declaration,
`DELL-1007)
`IEEE 802.11-04/736r1, “Approved Minutes of the IEEE P802.11 Full
`Working Group”, Minutes (July 2004) (Appendix B to Lansford
`Declaration, DELL-1007)
`O’Hara, The IEEE 802.11 Handbook, Standards Information
`Network, IEEE Press, 1999
`
`1038
`
`1039
`
`1040
`
`- vi -
`
`

`

`
`
`Exhibit
`1041
`
`1042
`
`1043
`
`1044
`
`1045
`
`1046
`
`1047
`
`1048
`
`U.S. Patent 10.079,707
`IPR2024-00685
`
`Reference
`Jan. 11, 2024 Letter from Sarah Piepmeier letter to Kevin Wheeler
`regarding Dell Stipulation
`Sixth Amended Docket Control Order, AX Wireless LLC v. Dell Inc.
`et al., No. 2:22-cv-00277-RWS-RSP (E.D. Tex. Feb. 26, 2024), ECF
`No. 171
`Third Amended Docket Control Order, AX Wireless LLC v. Lenovo
`Grp. Ltd., No. 2:22-cv-00280-RWS-RSP (E.D. Tex. Oct. 31, 2023),
`ECF No. 130
`Docket Control Order, LightGuide, Inc. v. Amazon.com, Inc., et al.,
`No. 2:22-cv-00433-RWS-RSP (E.D. Tex. May 15, 2023)
`Docket Control Order, Textron Innovations Inc., v. SZ DJI Tech. Co.,
`Ltd, et al., No. 2:22-cv-0351-RWS-RSP (E.D. Tex. May 11, 2023)
`“Time to Milestones – Judges: Robert W. Schroeder, III Case
`Filing Date: On or After Jan. 1st, 2008,” Docket Navigator
`Dell’s Opposed Motion for Stay Pending IPR, AX Wireless LLC v.
`Dell Inc. et al., No. 2:22-cv-00277-RWS-RSP (E.D. Tex. Mar. 13,
`2024), ECF No. 179
`Comparison between the current Petition and petition in IPR2023-
`01136
`
`- vii -
`
`

`

`
`
`I, Thomas LaPorta, Ph.D., declare as follow:
`I have been retained by Perkins Coie LLP on behalf of Dell Inc. and
`1.
`
`U.S. Patent 10,079,707
`IPR2024-00685
`
`Dell Technologies Inc. (collectively “Petitioner” or “Dell”), to provide this
`
`Declaration concerning technical subject matter relevant to the petition for Inter
`
`Partes Review (“Petition”) of U.S. Patent No. 10,079,707 to Kim et al. (“the ’707
`
`patent”). It is my understanding that the ’707 patent is currently assigned to AX
`
`Wireless (“Patent Owner”).
`
`2.
`
`I am over 18 years of age. I have personal knowledge of the facts
`
`stated in this Declaration and could testify competently to them if asked to do so. I
`
`have reviewed and am familiar with the specification and the claims of the ’707
`
`patent. In general, I will cite to the specification of a United States patent using the
`
`following formats: (Patent No., Col:Line Number(s)) or (Patent No., Paragraph
`
`Number(s)). For example, the citation (’707 patent, 1:1-10) points to the ’707
`
`patent specification at column 1, lines 1-10. Also, for convenience, I use italics to
`
`denote limitations from the challenged claims.
`
`3.
`
`All of the opinions contained in this Declaration are based on the
`
`documents I reviewed and my knowledge and professional judgment. In forming
`
`the opinions expressed in this Declaration, I reviewed the documents listed in the
`
`- 1 -
`
`

`

`
`
`attached Appendix. I have also reviewed and am familiar with any other document
`
`U.S. Patent 10,079,707
`IPR2024-00685
`
`referred to in this Declaration.
`
`4.
`
`I have been asked to provide my technical opinions regarding how a
`
`person of ordinary skill in the art (“POSITA”) would have understood the claims
`
`of the ’707 patent at the time of the alleged invention. For purposes of whether the
`
`teachings of the prior art render the claims of the ’707 patent obvious, I have been
`
`asked to assume the date of August 21, 2009, for the analysis in this document. I
`
`have also been asked to provide my technical opinions on how concepts in the ’707
`
`patent specification relate to claim limitations of the ’707 patent. In reaching the
`
`opinions provided herein, I have considered the ’707 patent, its prosecution
`
`history, and the references cited in Attachment A, and have drawn as appropriate
`
`on my own education, training, research, knowledge, and personal and professional
`
`experience.
`
`I. Qualifications
`In formulating my opinions, I have relied on my knowledge, training,
`5.
`
`and experience in the relevant field, which I will summarize briefly. A more
`
`detailed summary of my background, education, experience, and publications is set
`
`forth in my curriculum vitae (“CV”), which is provided as DELL-1004.
`
`- 2 -
`
`

`

`
`
`I have personal knowledge of the facts and opinions set forth in this
`
`U.S. Patent 10,079,707
`IPR2024-00685
`
`6.
`
`declaration and believe them to be true. If called upon to do so, I would testify
`
`competently thereto. I have been warned that willful false statements and the like
`
`are punishable by fine or imprisonment, or both.
`
`7.
`
`I am being compensated for my time at my standard consulting rate. I
`
`am also being reimbursed for expenses that I incur during the course of this work.
`
`My compensation is not contingent upon the results of my study and analysis, the
`
`substance of my opinions, or the outcome of any proceeding involving the
`
`Challenged Claims. I have no financial interest in the outcome of this matter or in
`
`any litigation involving the ’707 patent.
`
`8.
`
`I am the Director of the School of Electrical Engineering and
`
`Computer Science at Penn State University. I am also an Evan Pugh Professor in
`
`the Department of Computer Science and Engineering and the Department of
`
`Electrical Engineering at Penn State University. I was the founding Director of the
`
`Institute of Networking and Security Research at Penn State. I have worked on
`
`telecommunications networks since 1986.
`
`9.
`
`I received my B.E. and M.E. in Electrical Engineering from The
`
`Cooper Union for the Advancement of Science and Art in 1986 and 1987,
`
`- 3 -
`
`

`

`
`
`respectively, and my Ph.D. in Electrical Engineering from Columbia University in
`
`U.S. Patent 10,079,707
`IPR2024-00685
`
`1992.
`
`10.
`
`I joined AT&T Bell Labs (which later became Bell Labs, Lucent
`
`Technologies) in 1986 after receiving my B.E. degree, and pursued my M.E.
`
`degree part-time. In my first job at Bell Labs, I tested the performance and
`
`interoperability of many data communication devices within the AT&T network. I
`
`transferred into Bell Labs Research in 1990 to pursue research full-time.
`
`11. Starting in 1994, I performed research directed towards mobile and
`
`wireless networks. During this period, I worked extensively on signaling protocols
`
`and call processing for mobile telephony networks and mobile data applications. A
`
`large portion of my work was directed at architectures, protocols, and software for
`
`enabling different types of services on wireless networks. As part of this work I
`
`worked on efficient wireless link layer protocols.
`
`12.
`
`In 1997, I became the Director of the Mobile Networking Research
`
`Department within Bell Labs Research. This group, which included approximately
`
`30 researchers and support developers, carried out basic research on mobile
`
`networks including cellular telephony, mobile Internet, integrated networks and
`
`mobile data services. In 2000, I was named the Director of the Advanced Mobile
`
`Networking Department within the Wireless Business Unit of Lucent
`
`- 4 -
`
`

`

`
`
`Technologies. My role in this job was to work with development organizations to
`
`U.S. Patent 10,079,707
`IPR2024-00685
`
`turn technology into products.
`
`13. During both my development and research careers, I interacted
`
`extensively with computer scientists and engineers responsible for the design,
`
`development, and testing of mobile telephony and data networking products with a
`
`focus on wireless networks. As a research manager, I oversaw a department that
`
`executed many large-scale joint projects with development organizations to release
`
`products for Lucent Technologies. Examples of such joint projects include, the
`
`control software for Lucent Technologies’ 3G network access controllers used for
`
`interconnecting CDMA base stations, processor overload controls in Lucent
`
`Technologies’ cellular soft switches, the industry’s first multi-protocol Home
`
`Location Register, servers and protocols for enabling services and interactive text
`
`messaging via cellular networks, the first systems to interwork 2G and 3G
`
`networks of different types with all-IP networks, and mobile Internet services.
`
`These interactions exposed me to a wide range of computer scientists and
`
`engineers working on wireless network technologies and applications.
`
`14. As the Director of both the Networking Research Department in Bell
`
`Labs and the Advanced Mobile Networking Department within the Wireless
`
`Business Unit of Lucent Technologies, I met extensively with product managers
`
`- 5 -
`
`

`

`
`
`and marketing organizations for the Wireless Business Unit of Lucent
`
`U.S. Patent 10,079,707
`IPR2024-00685
`
`Technologies and representatives of many cellular service providers. In these
`
`meetings, I would often present new concepts and product directions that the
`
`company was advancing in the wireless market.
`
`15.
`
`I also taught as an adjunct member of the faculty at Columbia
`
`University in 1993 and from 1996-2001. I taught graduate classes in networking
`
`protocol design (1993) and mobile computing and networking (1996-2001). As
`
`such, I am familiar with the curricula taught to Electrical Engineers and Computer
`
`Scientists from the early 1990s until today.
`
`16.
`
`I am a co-inventor on at least 39 United States Patents and 18 foreign
`
`patents, of which the large majority pertain to mobile telecommunications. Two of
`
`my patents, one of which helped enable the mobile Internet, were awarded the
`
`Thomas Alva Edison Patent Award by the Research and Development Council of
`
`New Jersey. For my early work I was recognized with an Eta Kappa Nu
`
`Outstanding Young Electrical Engineer Award and the Bell Labs Distinguished
`
`Staff Award.
`
`17. While at Bell Labs, I led my research department into creating new
`
`network, service and software architectures for building some of the first wireless
`
`mobile data services. One example was designing a link layer protocol for more
`
`- 6 -
`
`

`

`
`
`efficient wireless transmissions. This led to two patents and two published papers.
`
`U.S. Patent 10,079,707
`IPR2024-00685
`
`I performed several other research efforts to improve the efficiency of the use of
`
`wireless networks in different types of data systems.
`
`18. After joining Penn State I continued my work on wireless networks
`
`and services including several that were related wireless communications. This
`
`included work on allocating resources to efficiently use wireless bandwidth in
`
`OFDM systems and resulted in several published papers.
`
`19. Because of my expertise on security in wireless networks, I was
`
`appointed to The President’s National Security Telecommunications Advisory
`
`Committee. My role on this Committee was to identify security risks for current
`
`and evolving cellular networks.
`
`20. Based on this experience, and my continuing work at Penn State
`
`University, I have intimate knowledge of wireless and mobile networks and
`
`services. I have been highly recognized as an expert in such systems. I was
`
`recognized with the Bell Labs Distinguished Member of Technical Staff award in
`
`1996. My award letter stated in part, “[y]our contributions to wireless call
`
`processing have profoundly impacted Lucent. You are very well-known as
`
`demonstrated by your three best paper awards…”. I was named a Bell Labs Fellow
`
`in 2000, “[f]or outstanding contributions in mobile wireless networks in the area of
`
`- 7 -
`
`

`

`
`
`call processing, signaling, mobility management, and applications.” I was named
`
`U.S. Patent 10,079,707
`IPR2024-00685
`
`an IEEE Fellow in 2002 “for contributions to systems for advanced broadband,
`
`mobile data and mobile telecommunication networks.”
`
`21.
`
`I previously served as the Editor-in-Chief of IEEE Personal
`
`Communications Magazine and was the founding Editor-in-Chief of IEEE
`
`Transactions on Mobile Computing. I have published about 300 technical papers in
`
`this field.
`
`22. My research is supported primarily by the Department of Defense and
`
`the National Science Foundation. I was the Director of a center funded by the U.S.
`
`Army Research Lab studying network science as it relates to communication
`
`networks. I also led a recently concluded project funded by the Defense Threat
`
`Reduction Agency to improve network reliability against attack by weapons of
`
`mass destruction. I am currently the Penn State Principal Investigator on an
`
`NSF/DoD funded project on 5G networks.
`
`II. Understanding of Relevant Legal Principles
` I am not a lawyer, and I will not provide any legal opinions. Although
`23.
`
`I am not a lawyer, I have been advised certain legal standards are to be applied by
`
`technical experts in forming opinions regarding the meaning and validity of patent
`
`claims.
`
`- 8 -
`
`

`

`
`
`I understand that a patent claim is invalid if it is anticipated or obvious
`
`U.S. Patent 10,079,707
`IPR2024-00685
`
`24.
`
`in view of the prior art, and that a claim can be unpatentable even if all of the
`
`requirements of the claim cannot be found in a single prior-art reference. I further
`
`understand that invalidity of a claim requires that the claim be anticipated or
`
`obvious from the perspective of a person of ordinary skill in the art at the time the
`
`invention was made.
`
`25.
`
`I have been informed that a patent claim is invalid if it would have
`
`been obvious to a person of ordinary skill in the art. In analyzing the obviousness
`
`of a claim, I understand the following factors may be taken into account: (1) the
`
`scope and content of the prior art; (2) the differences between the prior art and the
`
`claims; (3) the level of ordinary skill in the art; and (4) any so called “secondary
`
`considerations” of non-obviousness, if they are present. I am not aware of any
`
`evidence of secondary considerations of non-obviousness relevant to the ’707
`
`patent. I reserve the right to supplement this Declaration if Patent Owner (“PO”)
`
`introduces evidence of secondary considerations of non-obviousness.
`
`26.
`
`I understand that to prove that prior art or a combination of prior art
`
`renders a patent obvious, it is necessary to:
`
`(1)
`
`identify the particular references that, singly or in combination, make
`
`the patent obvious;
`
`- 9 -
`
`

`

`
`
`(2) specifically identify which elements of the patent claim appear in each
`
`U.S. Patent 10,079,707
`IPR2024-00685
`
`of the asserted references; and
`
`(3) explain why a person of ordinary skill in the art would have combined
`
`the references, and how they would have done so, to create the
`
`inventions claimed in the patent. I further understand that exemplary
`
`rationales that may support a conclusion of obviousness include:
`
`• combining prior art elements according to known methods to yield
`
`predictable results;
`
`• simple substitution of one known element for another to obtain
`
`predictable results;
`
`• use of known technique(s) to improve similar devices (methods or
`
`products) in the same way;
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`• applying a known technique to a known device (method or product)
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`ready for improvement to yield predictable results;
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`• “obvious to try” – choosing from a finite number of identified,
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`predictable solutions with a reasonable expectation of success;
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`• known work in one field of endeavor may prompt variations of the work
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`for use in either the same field or a different field based on design
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`incentives or other market forces if the variations are predictable to a
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`person of ordinary skill in the art; and
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`• some teaching, suggestion, or motivation in the prior art that would
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`have led a person of ordinary skill in the art to modify the prior art
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`reference or to combine prior art reference teachings to arrive at the
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`claimed invention.
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`27.
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`I have been informed that, in considering obviousness, hindsight
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`reasoning derived from the patent-at-issue may not be used
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`’707 Patent
`III.
`A. Overview of ’707 Patent
`28. The ’707 patent is “directed toward header repetition in a
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`communications environment.” (DELL-1001, 1:27-30.) The header of a packet (or
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`frame) “contains important control information for the receiver to decode the
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`payload properly, and also provides information about the packet length for virtual
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`carrier sensing.” (DELL-1001, 1:50-53; see also, DELL-1001, 1:34-42.) Therefore,
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`“it is essential to decode the header reliably.” (DELL-1001, 1:53.)
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`29. To achieve this goal, the ’707 patent describes four different header
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`configurations, illustrated in Figure 1. The value of D in Figure 1 corresponds to
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`the number of repetitions of the header and the value of H in Figure 1 corresponds
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`to the number of symbols required for a single header (e.g., whether the header is
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`extended). In the first example of Figure 1 where H=1 and D=1, the packet
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`includes a “preamble followed by a header followed by a payload.” (DELL-1001,
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`5:50-52.) This example represents a simple “one-part” header field.
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`’707 Patent, Figure 1
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`
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`30. The ’707 patent does not use the term “header field,” other than in the
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`claims and the abstract. During prosecution, the Examiner equated the term
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`“header field” with the configuration of the packet’s header. (See DELL-1002
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`(NOA), 2.) For example, a single header is a “header field”, a repeated header is a
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`“header field”, an extended header is a “header field”, and a repeated and extended
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`header is a “header field.” Consistent with the Examiner’s understanding, I also
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`equate the “header field” with the configuration of the packet header.
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`31.
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`In the second example where H=1 and D=2, the packet includes a
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`preamble followed by a header that is repeated, which is followed by the payload.
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`(DELL-1001, 5:52-54.) This “repeated header” example includes a “two-part”
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`header field with each part carrying the same information. (DELL-1001, 5:54-56.)
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`32.
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`In the third example where H=2 and D=1, the packet includes a
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`preamble and a header followed by a header extension and the payload. (DELL-
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`1001, 5:56-58.) This “extended header” example is also a “two-part” header field
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`but in this example the two parts carry different information. (See, e.g., DELL-
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`1001, 5:64-66.)
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`33. And in the fourth example where H=2 and D=2, the packet includes a
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`preamble, a header which is repeated, and a header extension which is also
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`repeated, followed by the payload. (DELL-1001, 5:58-61.) This “repeated,
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`extended header” example is a “four-part” header field with the first and second
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`parts carrying the same information and the third and fourth parts carrying the
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`same information. (DELL-1001, 5:61-62.)
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`In the Notice of Allowance, the Examiner pointed to the third and
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`34.
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`fourth example as the basis for allowance, finding the “prior art of record fails to
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`disclose the first header field (i.e., Figure 1 “(3)”) and the second header field (i.e.,
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`Figure 1 “(4)”). (DELL-1002 (NOA), 2.)
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`35. The extended and/or repeated headers of the ’707 patent can be used
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`in communications systems such as ITU G.9960 (G.hn) and IEEE 802.11 that use
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`“frame-based (or packet-based) transmission to communication [sic] between two
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`or more users over a shared channel based on Orthogonal Frequency Division
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`Multiplexing (OFDM1).” (DELL-1001, 1:34-44; see also, DELL-1001, 4:32-49.)
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`The ’707 patent acknowledges that, prior to its earliest possible priority date,
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`G.9960 “has defined two overlapped baseband bandplans, 50MHz-PB and
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`100MHz-PB” and the “possibility of having narrower bandplans such as 25 MHz-
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`PB and 12.5 MHz-PB are under discussion.” (DELL-1001, 2:15-20; See also,
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`DELL-1001, 1:53-55 (noting that G.9960 “should be familiar to those skilled in the
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`art”).) Thus, the ’707 patent admits the existing ITU G.9960 standard supported
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`two bandplansone at least two times wider than the other.
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`
`1 An acronym list is provided in Appendix B.
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`36. The generic transceiver 200 described for use in these systems
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`includes header assembly module 220, modulation module 230, demodulation
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`module 240, transmitter 250, encoding module 260, decoding module 270, receiver
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`280, and controller/processor 290. (DELL-1001, 6:13-21; Figure 2 below.) The
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`’707 patent provides limited details regarding these “modules” and how they are
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`interconnected. The ’707 patent does note that its “description omits well-known
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`structures, operations and devices that may be shown in block diagram form or are
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`otherwise summarized or known.” (DELL-1001, 4:49-53.)
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`’707 patent, Figure 2
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`
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`B. Technical Background
`37. The concepts of repeating a header and repeating an extended header
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`were not novel prior to the earliest possible priority date of the ’707 patent. In fact,
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`the Applicant, Applied Transform, admitted these concepts were proposed in
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`submissions by other companies during development of the ITU-T G.hn standards
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`mentioned in the ’707 patent. (See DELL-1009, 21-22; DELL-1019; DELL-1020.)
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`I discuss the G.9960 standard and these contributions in §§III.A.3.b-c below.
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`38. The ITU-T G.hn standards group was not the only standards group
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`openly discussing the concepts of repeating and extending a physical layer header
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`prior to the earliest possible priority date of August 2009. Four years before ITU-T
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`G.hn considered these concepts, the IEEE 802.11 TGn working group dis