`Tel: 571-272-7822
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`.
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`Paper 13
`Filed: May 28, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`HUAWEI DEVICEUSA,INC. and
`ZTE (USA), INC.,
`Petitioner,
`
`V.
`
`SPH AMERICA, LLC and ELECTRONICS AND
`TELECOMMUNICATIONS RESEARCH INSTITUTE,
`Patent Owner.
`
`Case IPR2015-00221
`Patent 8,565,346 B2
`
`Before SALLY C. MEDLEY, BARBARA A. BENOIT, and
`BETH Z. SHAW,Administrative Patent Judges.
`BENOIT, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 CFR. § 42.108
`
`
`
`IPR2015-00221
`Patent 8,565,346 B2
`
`I. INTRODUCTION
`
`Huawei Device USA,Inc. and ZTE (USA),Inc. (collectively,
`
`“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting an inter partes
`review of claims 1, 23-25, 27-32, 34, 37, 38, and 40-42 (the “challenged
`
`claims”) of U.S. Patent No. 8,565,346 B2 (Ex. 1016, “the ’346 patent”).
`SPH America, LLC and’Electronics and Telecommunications Research
`Institute (collectively, “Patent Owner”) filed a Preliminary Response.
`
`_
`
`Paper9 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314(a),
`which providesthat an inter partes review maynotbeinstituted “unless . ..
`there is a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.”
`Forthe reasonsthat follow, we denyinstitution of an inter partes
`
`review.
`
`A. Related Matters
`
`Petitioner represents that the °346 patent wasasserted in various
`
`proceedings in the United States District Court for the Southern District of
`
`California. Pet. 1; see Paper 7, 2 (Patent Owner’s Notice of Related
`Matters). Petitioner has requested inter partes review ofrelated patent’
`
`U.S. Patent No. 8,532,231 B2 (IPR2015-00203).
`
`B. The ’346 Patent
`
`The ’346 patent relates to techniquesfor increasing the rate of
`
`transmitting data in a wireless network, while maintaining compatibility
`
`"U.S. Patent No. 8,532,231 B2 andthe challenged patent both claim priority
`to the same family of patent applications, including Application
`No. 12/805,117, which issued as U.S. Patent No. 8,130,869.
`
`
`
`IPR2015-00221
`Patent 8,565,346 B2
`with conventional wireless transmission protocols—specifically, while
`maintaining compatibility with the conventional IEEE 802.11a standard.
`
`Ex. 1016, 1:24—29, 42-45, 3:19-22. Rather than using a single antenna for
`
`wirelessly transmitting data as used in the conventional IEEE 802.1la
`standard, the ’346 patent describes using multiple antennas for transmission
`to achieve a higher data rate. Jd. at 1:35-41, 45-47. As the 346 patent
`indicates, previous systems using multiple antennas to provide a high speed
`data rate had not been compatible with conventional transmitting and
`receiving systems using the IEEE 802.11a standard.. Jd. at 3:8—10.
`
`To maintain compatibility with the IEEE 802.11a standard in a
`multiple antenna system, the °346 patent describes using the signal symbol
`portion of a conventional IEEE 802.11a frame in two particular ways. Id. at
`3:54-63 (“Technical Solution” in the “Summary of the Invention”section).
`First, the signal symbol portion includes a “transmit modeidentifier” that
`indicates whether the transmit modeof the frame is a conventional “single
`
`antenna transmit mode”or a multiple antenna mode—morespecifically, “a
`multiple-input/multiple-output (MIMO)mode.” Id. at 3:54-57. Second, the
`reservedbit of the signal symbol portion of a conventional IEEE 802.1la
`|
`frame is used to indicate which of two MIMO methods—aspatial division
`multiplexing (SDM) methodor a space-time block code (STBC)encoding
`method—is used for the transmission of the frame. Jd. at 3:58-63; see id. at
`
`10:43-46 (describing SDM and STBC as methods in a MIMOsystem).
`
`C. Challenged Claims
`
`Ofthe challenged claims, claims 1, 23, 30, and 37 are independent.
`Claim 23, reproducedbelow,is illustrative of the claimedsubject matter:
`
`
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`IPR2015-00221
`Patent 8,565,346 B2
`
`23. A transmitting apparatus in a wireless communication
`system, the apparatus comprising:
`a frame generator configured to generate a frame comprising:
`a short preamble comprising synchronization information,
`a first and a second long preambles subsequentto the short
`preamble,
`a signal symbol positioned betweenthefirst long preamble and
`the second long preamble, wherein the signal symbol
`comprises information about space time block coding, and
`a data field positioned subsequent to the second long preamble;
`and
`
`a transmitter configured to transmit the frame to a receiver.
`
`Ex. 1016, 16:60—-17:7.
`
`D. Asserted Grounds of Unpatentability
`
`Petitioner contends the challenged claims are unpatentable under.
`35 U.S.C. § 103(a) as obvious overthe following references (Pet. 3-4):
`
`eferen
`aims
`Cha
`Narasimhan’ and Alamouti’
`
`Narasimhan, Alamouti, and IEEE
`802.11a Standard*
`
`24, 25, 31,32, 37, and
`38
`
`30
`
`
`
`
`
`
`
`
`
`Narasimhan, Alamouti, IEEE 802.11a
`Standard, and Aoki?
`
`
`27-29, 34, and 40-42
`
`? U.S. Patent No. 7,577,085 B1, issued Aug. 18, 2009,filed July 5, 2002
`(Ex. 1009) (“Narasimhan”). The parties refer to this reference as “N’085.”
`7S. M. Alamouti, “A Simple Transmit Diversity Technique for Wireless
`Communications,” 16 IEEE J. ON SELECT AREAS INCOMMUNICATIONS1451
`(1998) (Ex. 1003) (“Alamouti’’).
`“ IEEE Standard 802.11a (1999) (Ex. 1010).
`
`4
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`IPR2015-00221
`Patent 8,565,346 B2
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`
`
`Narasimhan, Alamouti, IEEE 802.11a__|
`Standard, and Gummadi 6
`
`Liu, Jeon, and IEEE 802.11a Standard
`
`
`
`Claims Challenged
`|» 27, 34, and 40
`
`25 and 30
`
`24, 25, 31,32, 37, and
`38
`
`jyJeans IEEE 802.11a Standard, and
`
`i
`
`27-29, 34, and 40-42
`
`
`
`
`
`
`II. ANALYSIS
`
`- We turn to Petitioner’s asserted grounds of unpatentability to
`
`determine whether Petitioner has met the threshold of 35 U.S.C. § 314(a). A
`
`groundof unpatentability can be instituted only if the petition supporting the
`ground demonstratesthere is a reasonable likelihood that at least one
`
`challenged claim is unpatentable. 37 C.F.R. § 42.108(c).
`
`A. Real Party-In-Interest
`
`Section 312(a) of Title 35 of the United States Code provides that a
`petition for inter partes review under 35 U.S.C. § 311 may be considered
`
`> Aoki, et al., “New preamble structure for AGC in a MIMO-OFDMsystem,”
`IEEE 802.11-04/046r1, Jan. 2004 (Ex. 1008) (“Aoki”). Petitioner asserts
`this reference is “a presentation given by employeesof[a particular
`corporation] .
`.
`. to the IEEE in January 2004.” Pet. 8.
`° U.S. Patent Application Publication No. 2005/0054313 Al,
`published Mar. 10, 2005, filed Mar. 29, 2004 (Ex. 1011) (“Gummadi”).
`"Liu & Li, “A MIMOSystem with Backwards Compatibility for OFDM
`based WLANs,”4th IEEE Workshop on Signal Processing Advancesin
`Wireless Communications, 2003 (Ex. 1012) (“Liu”).
`8 Jeon,et al., “Optimal Combining of STBC andSpatial Multiplexing for
`MIMO-OFDM,”IEEE 802.1 1-03/0513r0, July 2003 (Ex. 1006) (“Jeon”).
`Petitioner asserts these slides were “submitted to IEEE on July 2003.”
`Pet. 7.
`
`
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`IPR2015-00221
`Patent 8,565,346 B2
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`only if, among otherthings,the petition identifies all real parties-in-interest.
`35 U.S.C. § 312(a)(2). Whether a non-identified party is a real party-in-
`
`interest to a proceeding is a highly fact-dependent question. Office Patent
`
`Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012) (“Trial
`
`Practice Guide”) (citing Taylor v. Sturgell, 553 U.S. 880 (2008)). “Courts
`
`invoke the terms‘real party-in-interest’ and ‘privy’ to describe relationships
`
`and considerationssufficient to justify applying conventionalprinciples of
`
`estoppel and preclusion.” Jd. Taylorlists six categories that create an
`
`exception to the commonlaw rule that normally forbids non-party
`
`preclusionin litigation. Taylor, 553 U.S. at 893-95. “A common
`
`consideration is whether the non-party exercised or could have exercised
`control overa party’s participation in a proceeding.” Trial Practice Guide,
`77 Fed. Reg. at 48,759 (citing Taylor, 553 U.S. at 895).
`
`Factors for determining actual control or the opportunity to control
`include existence of a financially controlling interest in the petitioner. Rules
`ofPracticefor Trials Before the Patent Trial and Appeal Board and Judicial
`
`Review ofPatent Trial and Appeal Board Decisions; Final Rule, 77 Fed.
`
`Reg. 48,612, 48,617 (Aug. 14, 2012). Additional relevant factors include:
`the non-party’s relationship with the petitioner; the non-party’s relationship
`to the petitionitself, including the nature and/or degree of involvementin the
`filing; and the nature ofthe entity filing the petition. Trial Practice Guide,
`
`77 Fed. Reg. at 48,760.
`
`The Petition names ZTE (USA), Inc. (“ZTE (USA)”) asareal party-
`
`in-interest. Pet. 1. Patent Owner argues that ZTE (USA)’s parent company,
`
`ZTE Corporation,also is.a real party-in-interest. Prelim. Resp. 28-30. In
`
`particular, Patent Ownerarguesthat assertions made jointly by ZTE
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`IPR2015-00221
`Patent 8,565,346 B2
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`Corporation and ZTE (USA) during a related district court case are sufficient
`
`to show that ZTE Corporationis a real party-in-interest for purposesofthis
`proceeding. Id.
`Wehaveconsidered the reasoning and evidence to: which weare
`
`directed in support of Patent Owner’s arguments—ajoint motion for
`
`dismissal of ZTE Corporation from the related case. Ex. 2005 (“joint
`
`motion” or “evidence”’). We disagree with Patent Ownerthat the joint
`
`motion tends to show that ZTE Corporation has an interest in this
`proceeding. Wefind the joint motion to be ambiguous. Patent Ownerrelies
`on the joint motion to show that ZTE Corporation and ZTE (USA) made
`
`mutual representations regarding party responsibility for infringement, and
`
`that ZTE Corporation and ZTE (USA)shared information and documents
`
`during the related case. Prelim. Resp. 28—29. The joint motion, however,
`also represents ZTE Corporation’s dismissal from the case, seemingly
`representing that ZTE Corporation and ZTE (USA) have nonaligned
`
`interests with respectto the related case. The joint motionis not persuasive
`evidence to show that ZTE Corporation’ exercised or could have exercised
`control over the IPR petition drafting andfiling as Patent Ownerasserts.
`
`The Petition also names Huawei Device USA,Inc. (“Huawei USA”)
`
`as a Petitioner real party-in-interest. Pet. 1. Patent Ownerarguesthat
`
`Huawei Technologies Co., Ltd. (“Huawei Tech.”), Futurewei Technologies,
`
`Inc. (“Futurewei Tech.”’), and Shenzhen Huawei Investment and Holding
`Co., Ltd. (“Shenzhen’’)also are real parties-in-interest. Prelim. Resp. 30-31.
`In particular, Patent Owner argues that because Huawei Tech. and Futurewei
`Tech. are co-defendants with Huawei USAin a related district court case
`(“the related case’’), theyall have a commoninterest in the instant challenges
`
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`IPR2015-00221
`Patent 8,565,346 B2
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`brought by Petitioner. /d. at 30. Patent Owner additionally arguesthat
`because Huawei USA, Huawei Tech., and Futurewei Tech.are each
`subsidiaries of Shenzhen, Shenzhenalso should be included as a real party-
`in-interest. Jd. at 30~31.
`
`Thereislittle to no reasoning or evidenceof record to suggest that
`Shenzhen should be nameda real party-in-interest. We have considered
`Exhibit 2006, which is the defendants’ answer to the complaintfiled in the
`
`related case. Ex. 2006. Patent Ownerrelies on Exhibit 2006 to show that
`
`Shenzhen, whois not involvedin the related case, is the parent company to
`
`all of the other companies mentioned therein. But Exhibit 2006 describes
`Huawei USA, Huawei Tech., and Futurewei Tech.as “indirect” subsidiaries.
`
`- We do not know,based on the record before us, what relationship constitutes
`an “indirect” one, and Patent Ownerdoesnot explain the relationship status
`in that regard. In any event, evenifHuawei USA, Huawei Tech.,and
`Futurewei Tech.are “direct” subsidiaries of Shenzhen, that alone does not
`
`make Shenzhena real party-in-interest of this proceeding. Patent Owner has
`
`not shownthat Shenzhen controlled, or could have controlled, the
`
`proceeding. Patent Owner’s arguments with respect to Shenzhen being a
`
`real party-in-interest are tenuous. .
`
`The same Exhibit 2006 also is relied on by Patent Ownerto show that
`
`Huawei Tech. and Futurewei Tech., by status of being co-defendants with -
`
`Huawei USA in the related case, should be namedasrealparties-in-interest
`in this proceeding. Being a co-defendantin a related case does not, without
`more, establish control or the ability to control a proceeding. Forall ofthese
`reasons, we determine that Patent Ownerhas not shownthat Petitioner has
`
`failed to nameall real parties-in-interest.
`
`
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`IPR2015-00221
`Patent 8,565,346 B2
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`B. Claim Construction
`
`In an interpartes review, claim terms in an unexpiredpatentare
`interpreted according to their broadest reasonable constructionsin light of
`the specification of the patent in which they appear. See 37 C.F.R.
`§ 42.100(b); see Trial Practice Guide, 77 Fed. Reg. at 48,766. Under the
`
`broadest reasonable construction standard, claim terms are presumed to be
`
`given their ordinary and customary meaning, as would be understood by one
`
`of ordinary skill in the art in the context of the entire disclosure. Jn re
`
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). An inventor
`
`may provide a meaning for a term thatis different from its ordinary meaning
`
`by defining the term in the specification with reasonableclarity,
`
`- deliberateness, and precision. Jn re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`1994).
`.
`Weconstrue space-time block coding in view ofthese principles. We
`have considered the other claim terms that Petitioner identified for
`
`construction, and the Patent Owner’s responseto Petitioner’s proposed
`
`constructions. See:Pet. 9-11; Prelim. Resp. 10-17. We have determined
`
`that no other terms in the challenged claims require express construction for
`
`this decision.
`
`space-time block coding
`
`Independentclaims 1, 23, 30, and 37 recite “space-time block
`coding.” Petitioner contends, relying on the Declaration of |
`Tim A. Williams, Ph.D. (Ex. 1002) for support, that space-time block coding
`
`(i.e., STBC)is a term ofart in telecommunications, and then describes a
`
`space-time block coding system. Pet. 10 (citing Ex. 1002 9 91). As Patent
`
`Ownerobserves, Petitioner does not propose a construction for the term
`
`9
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`IPR2015-00221
`Patent 8,565,346 B2
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`space-time block coding. Prelim. Resp. 14. Nor does Patent Ownerpropose
`
`a construction. See id. at 14—17 (rebutting Petitioner’s proposed
`
`construction of space-time block coding). Although not presentedin the
`Petition, Petitioner’s declarant asserts that “one of skill in the art would
`
`understand the term ‘space-time block coding’ to mean,in the contextof the
`... 346 patent[], using block codes to encode a data stream, copies of which
`
`are transmitted over multiple antennas.” Ex. 1002 4 91.
`The °346 patent does notset forth a special definition for “space-time
`block coding.” The °346 patent describes “space-time block coding”or
`
`STBC in the context of how it is used, which is consistent with
`
`Dr. Williams’s conclusory testimony. For example, concerning the
`transmission over multiple antennas, the ’346 patentis directed to using
`multiple antennas for transmission to achieve a higher data rate, rather than
`
`using a single antennafor wirelessly transmitting data as used in the
`
`conventional IEEE 802.11a protocol. Ex. 1016, 1:35-41, 45-47.
`
`The ’346 patent also describes space-time block coding as a way to
`
`encode data for transmission. For example, the ’346 patent describes
`
`“encod[ing] STBC, an STBC encoder, and an STBC decoder.” /d. at 4:9,
`
`7:15—18; see also id. at 11:18—21 (determining “whether the transit mode is
`
`the SDM-OFDMor the STBC-OFDM,andrestores the transmit data after a
`
`proper demodulation process according to the determined mode”). The ’346
`
`patent contrasts space-time block coding with another method that can be .
`
`used in MIMOsystems—spatial division multiplexing (“SDM”). Jd. at
`
`3:60—63, 10:43—-46 (determining whether the transmit mode in a multiple
`antenna transmit system (i.e., MIMO)is the SDM modeor the STBC mode);
`see id. at 7:4 (defining SDM as an acronym for spatial division
`
`10
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`IPR2015-00221
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`multiplexing). Thus, space-time block coding,in the context of the 7346
`patent,is a methodthat uses block codes to encode a data stream for
`
`transmission over multiple antennas in a MIMOsystem.
`
`C. Asserted Grounds of Obviousness Relying on Narasimhan and Alamouti
`
`Petitioner contends the challenged claims all would have been
`
`obvious under § 103 over the combination of Narasimhan and Alamouti,
`either over the combination alone or over the combination and various other
`
`references. Pet. 11-42. To support these contentions, Petitioner provides
`
`explanations and claim charts specifying where claim limitations
`
`purportedly are disclosed or suggested in the references, and why oneskilled
`in the art would combinethe references. Id. Petitioneralsocites the
`Declaration ofDr. Williams for support. Jd. Patent Ownerchallenges
`Petitioner’s contentions regarding Narasimhan and Alamouti. Prelim. Resp.
`31-42, 47-54.
`|
`
`Wedeterminethat the information presented by Petitionerfails to
`establish a reasonable likelihood that any ofthe challenged claims are
`unpatentable under 35 U.S.C. § 103 as obvious over Narasimhan and
`
`Alamouti for the reasons that follow.
`
`1. Narasimhan
`
`Narasimhan describes techniques for addressing the problem that the
`
`IEEE 802.11a standard “do[es] not account for transmit diversity,” and
`
`Narasimhan recognized that “it would be advantageous to incorporate
`
`transmit diversity in a wireless transmission system that is backwards
`
`compatible with the IEEE 802.11la... standards.” Ex. 1009, 2:6-12. To do
`
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`IPR2015-00221
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`so, Narasimhan describes a novel frame format that is compliant with the
`preamble of the IEEE 802.11a standard.” Id. at 4:58-64.
`Narasimhan’s frame format includesa signal field which immediately
`follows the standards-compliant preamble, and generally is similar to the
`signal field of the IEEE 802.11a standard. Jd. at 4:66~5:2. In contrast to the
`
`IEEE 802.11a standard, Narasimhan’s signal field, however, also uses the
`
`reserved bit of the IEEE 802.1 1a standard signal field to indicate whether the
`
`data packet follows the diversity data packet format used when two antennas
`
`are used to transmit. Jd. at 5:2—18, 9:27-32; see id. at Fig. 2 (showing
`Narasimhan’s data packet format). The reservedbit is referred toasa
`“transmission diversity” flag (or semaphore) or as “TXDIV flag.” Jd. at
`
`4:5-13, 5:2-6, 9:27-32. Using the reserved bit of the signal field, according
`to Narasimhan,allows IEEE 802.11a standard-compliant transceivers to be
`
`used. Id. at 5:6—15; see also id. at 9:4-34 (describing a receiver processing
`the received signal in accordance with the IEEE 802.1 1a standard unless the
`
`transmit diversity flag has beenset).
`
`2. Alamouti
`
`Alamouti describes a transmit diversity technique using two transmit
`antennas and one receive antenna for wireless communications. Ex. 1003,
`
`Abstract. Two signals are transmitted simultaneously from two antennas,
`
`and “encoding is done in space and time.” Jd. at 3. Alamouti also indicates
`
`that “[t]he encoding, however, may also be done in space and frequency.”
`
`Id.
`
`_? To be moreprecise, the novel packet format is compliant with the Physical
`Layer Control Protocol (“PLCP”) preamble of the IEEE 802.1 1a standard.
`Ex. 1009, 3:42—-48, 4:62-64.
`
`12
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`3. The Challenged Claims
`
`Petitioner, relying on testimony from its declarant, contends that
`Narasimhanteachesor suggestsall ofthe features recited by independent
`claim 23, except for space-time block coding, which is taught by Alamouti.
`Pet. 11-14. Petitioner also contends that one of ordinary skill in the art
`wouldhave had reason to combine Narasimhan’s techniques for
`transmission diversity with the space-time block coding of Alamouti.
`
`Pet. 12 (citing Ex. 1002 {] 139-43). Patent Ownerchallenges Petitioner’s
`contentions. Prelim. Resp. 31-41.
`|
`A dispositive issue concerns “the signal symbol comprises
`
`information about space time block coding,”recited in independent
`
`claim 23. For this feature, Petitioner relies on the combination of
`
`Narasimhan’s disclosure of a signal field that indicates “the data packet
`
`followsa ‘diversity data packet format’” and Alamouti’s express disclosure
`
`of space-time coding. Pet. 13-14.
`
`First, Petitioner concludes, from Alamouti’s express disclosure of
`
`space-time coding, that “Alamouti .
`
`.
`
`. describes space-time block coding.”
`
`Pet. 12 (emphasis added), 14. Petitioner cites to the Declaration of
`
`Dr. Williams for this proposition. Pet. 12 (citing Ex. 1002 ¢{ 139-43).
`
`Dr. Williams asserts, without providing further explanation or support, that
`
`Alamouti “is consideredthe first description of space-time block coding
`
`(STBC), Alamouti’s technique waslater coined ‘space-time block coding’
`
`and Alamouti is considered the ‘father’ of STBC.” Ex. 1002 4 140. “Expert
`
`testimony that does not disclose the underlying facts or data on which the
`
`opinionis basedis entitled to little or no weight.” 37 C.F.R. § 42.65. We
`weigh Dr. Williams’s testimony accordingly. In re Am. Acad. ofSci. Tech
`
`13
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`Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Boardis entitled to
`_ weigh the declarations and concludethat the lack of factual corroboration
`
`warrants discounting the opinions expressed in the declarations.”).
`
`Petitioner’s distinction between space-time coding and space-time block
`
`coding in an asserted ground further underminesPetitioner’s position -
`
`regarding Alamouti’s express disclosure of space-time coding. See Pet. 43
`
`(combining Jeon’s disclosure of “using block coding with space-time
`coding” with Liu’s express disclosure of“space-time coding,” in asserting
`claim 23 would have been obvious over Liu and Jeon, because Liu does not
`
`disclose expressly “using block coding”). —
`
`Second, even if one ordinarily skilled in the art at the time ofthe
`
`invention would have understood Alamouti to have conveyed space-time
`block coding, we are not persuadedthat Petitioner’s proposed combination
`
`of the general notion of space-time block coding with Narasimhan’s signal
`
`field that indicates a particular format of a data packet would have conveyed
`
`to a person of ordinary skill in the art “a signal symbol. .
`
`. compris[ing]
`
`information about space time block coding,”as recited in claim 23.
`
`Petitioner has not identified in either Narasimhan or Alamouti a frame
`
`that includes information about space-time block coding. Rather, Petitioner
`relies on Narasimhan’s disclosure and Alamouti’s general disclosure of
`space-time block coding. More specifically, Petitioner relies on
`
`Dr. Williams’s testimony to conclude:
`
`determines
`[Narasimhan]
`exactly as Claim 23,
`Hence,
`transmission diversity, e.g., use of MIMO transmitters, based *
`on information in the “signal symbol.”
`
`Pet. 14 (citing Ex. 1002 § 132). Claim 23, however, does not require that
`
`transmission diversity be determined. Rather, claim 23 requires a frame
`
`14
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`generator configured to generate a frame comprising “a signal symbol. . .
`compris{ing] information about space time block coding.” For the reasons
`previously discussed in Section II-B, space-time block coding, in the context
`of the ’346 patent, is a block encoding method that can be used in a MIMO
`system. The *346 patent itself indicates, however, that STBCis not used
`necessarily by all MIMOsystems. See Ex. 1016, 3:60—-63, 10:43-46
`
`(determining whether SDM or STBCis used in a MIMOtransmission).
`
`Thus, determining transmission diversity, or use of MIMOtransmitters,
`based on information in a signal symbol,is insufficient to disclose “a signal
`symbol .. . compris[ing] information about space time block coding,” as
`
`recited in claim 23. Nor does Petitioner provide sufficient explanation or
`
`evidence that Narasimhan’s disclosure would have suggested a signal
`
`symbol comprising information about space time block coding.
`
`Evenif a person of ordinary skill in the art would have recognized
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`that the combination ofNarasimhan and Alamouti would have conveyed the
`concept of a signal symbol comprising information about space time block
`coding,Petitioner does not provide sufficient explanation or evidence why
`one ordinarily skilled in the art would have substituted an indicator of an
`encoding method(i.e., space-time block coding) for Narasimhan’s indicator
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`of a data packet format. KSR v. Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418—
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`19 (“[I]t can be important to identify a reason that would have prompted a
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`person of ordinary skill in the relevant field to combine the elements in the
`way the claimed new invention does. This is so because inventions in most,
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`if not all, instances rely upon building blocks long since uncovered, and
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`claimed discoveries almost of necessity will be combinations of what, in
`somesense, is already known.”). Thus, Petitioner has not shown that one of
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`ordinary skill would have combined Alamouti’s alleged general notion of
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`space-time block coding with Narasimhan’s signal field that indicates a
`particular format of a data packet, to arrive at the claimed invention that
`includes “a signal symbol[including] information about space time block
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`coding,”as recited in claim 23.
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`Third, the Petition falls short of providing articulated reasoning with
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`rational underpinning to support a legal conclusion that the subject matter of
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`claim 23 would have been obviousto one of ordinary skill in the art in view
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`of what Narasimhan and Alamouti would have conveyed about space-time
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`block coding to a person ofordinary skill in the art. KSR, 550 U.S. at 418
`(“[R]ejections on obviousness grounds cannotbe sustained by mere
`conclusory statements; instead, there must be somearticulated reasoning
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`with somerational underpinning to support the legal conclusion of
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`obviousness.”) (quoting Jn re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
`Petitioner contends that both space frequency encoding and space-time block
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`coding were known in the art and that one skilled in the art “would
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`appreciate the ability to select either space frequency encoding or space-time
`block coding.” Pet. 12. Based on this reason andciting Dr. Williams’s
`testimony, Petitioner concludes “[a]ccordingly, one ofskill in the art would
`have been motivated to combine the [Narasimhan] reference with the space-
`time block coding of Alamouti.” Id. (citing Ex. 1002 J 139-43).
`Dr. Williams’s testimony cited by Petitioner, however, does not
`
`support Petitioner’s contention that one ordinarily skilled in the art “would
`have been motivated to combine”the references. See generally Ex. 1002
`11 139-43. Rather, Dr. Williamstestifies that one skilled in the art “would
`appreciate the ability to select either space frequency encoding or space-time
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`block coding”(id. at § 142); “would have recognized that the space-
`frequencyencoding in [Narasimhan] could be replaced with the space-time
`block coding described in Alamouti”(id.); and “would have recognized the
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`benefit of using space-time block coding in Alamouti with the system
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`described in the [Narasimhan] reference,” without sufficiently articulating
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`whatthe benefit of using space-time block coding would have been (id. at
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`{ 143). None ofthat testimony indicates sufficiently why one ordinarily
`skilled in the art would have had reason to combinethereferencesin the
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`mannerclaimed. Accordingly, Dr. Williams’s testimony does not provide
`support for asufficient reason whyoneskilled in the art would have
`combined the references in the mannerclaimed, including a signal symbol
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`including information about space-time block coding, as required by claim
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`23. KSR, 550 USS. at 418 (“a patent composed of several elements is not
`proved obvious merely by demonstrating that each of its elements was,
`independently, known in the priorart”).
`Thus, without sufficient support from Dr. Williams, Petitioner’s
`rationale for modifying Narasimhan’s system with Alamouti’s alleged
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`space-time block coding,essentially, is that space-time block coding was
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`knownin the art. Pet. 12. Implementing known elements to yield
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`predictable results and improve similar devices in the same way generally is
`obviousunlessthe actual application is beyond the level of ordinary skill in
`the art. See KSR, 550 U.S. at 416-17. Petitioner, however, does not allege,
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`muchless support sufficiently, that Petitioner’s proposed combination would
`have yielded predictable results or how Alamouti’s alleged space-time block
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`coding would have improved Narasimhan’s system.
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`IPR2015-00221
`Patent 8,565,346 B2
`Forthese reasons, we determinethat the information presented by
`Petitioner fails to establish a reasonable likelihood that it would prevail in
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`showing independent claim 23 or its dependent claims 24, 25, 27, 28, and 29
`are unpatentable over Narasimhan and Alamouti.
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`Similarly, each of the other independent claims—claims1, 30, and
`37—1requirea signal symbol including information about space time block
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`coding. Ex. 1016, 14:39-—42 (claim 1), 17:42—45 (claim 30), 18:24—27
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`(claim 37). Petitioner relies on Narasimhan and Alamouti and makes
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`arguments for the information about space-time block codingin claims1,
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`30, and 37 similar to those it advanced with regard to claim 23. Pet. 16
`(claim 30), 24 (claim 37), 28—29 (claim 1).
`|
`For the reasonsarticulated with regard to claim 23, we determine that
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`the information presented by Petitionerfails to establish a reasonable
`likelihood that it would prevail in showing independent claims 1, 30, and 37,
`or dependent claims 31, 32, 34, 38, and 40-42, are unpatentable over
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`Narasimhan, Alamouti, and in combination with other references.
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`D. Asserted Grounds of Obviousness Relying on Liu and Jeon
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`Petitioner contends the challenged claimsall would have been
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`obvious under § 103 over the combination of Liu and Jeon, either over the
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`combination alone or over the combination andvariousother references.
`Pet. 42-59. To support these contentions, Petitioner provides explanations
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`and claim charts specifying where claim limitations purportedly are
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`disclosed or suggested in the references, and why oneskilled in the art
`would have combinedthe references. Jd. Petitioner also cites the
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`Declaration of Dr. Williams (Ex. 1002) for support. Jd. Patent Owner
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`challenges Petitioner’s contentions regarding Liu and Jeon. Prelim. Resp.
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`42-54.
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`Wedeterminethat the information presented by Petitioner fails to
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`establish a reasonable likelihood that any of the challenged claims are
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`unpatentable under 35 U.S.C. § 103 as obvious over Liu and Jeon for the
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`reasons that follow.
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`I. Liu
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`Liu describes techniques for improving the data rate of a conventional
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`wireless communication system based on the IEEE 802.1 1a standard.
`Ex. 1012; 130'° (Abstract). To accomplish that goal, Liu describes
`modifying the preamble ofthe IEEE 802.11a packet structure to support
`MIMO transmitters and receivers, while maintaining backward compatibility
`with the unmodified IEEE 802.11a packet structure.
`/d. Among other
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`techniques, Liu describes using the reserved bit of the signalfield in a
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`conventional IEEE 802.11a frame“to distinguish the MIMO from SISO
`transmissions.” /d. at 131 (§ 2.1). Liu also describes using a particular
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`MIMOwireless communication schemethat uses the IEEE 802.11a standard
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`and a space-time coding scheme. /d. at 130 (§§ 1, 2.1) (describing Bell-labs’
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`LAyered Space-Time(i.e., “BLAST’”) system).
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`2. Jeon
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`Jeonis titled “Optimal Combining of [Space-Time Block Coding] and
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`Spatial Multiplexing for [Multiple Antenna Systems using Orthogonal
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`' In citing to Liu, we use the original page numbering ofthearticle.
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`Frequency-Division Multiplexing''].” Jeon indicates space-time block
`coding involves a “[s]impler implementation than” another type of coding—
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`trellis coding.
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`-
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`3. Whether Jeon is Prior Art
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`Asaninitial matter, an inter partes review may only include “a
`ground that could be raised under section 102 or 103 and only on the basis of
`prior art consisting of patents or printed publications.” 35 U.S.C. § 311(b).
`
`Onits face, Jeon neither appears to be a patent nor a printed publication.
`Jeon is a collection of fourteen pages that appear to be formatted as a slide
`presentation and do not appear to be pages of a patent or printed publication.
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`See Ex. 1006. The pages of Jeon each include a header that presumably
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`identifies it as a documentrelated to the IEEE 802.11 standard and a date
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`“July 2003.” See, e.g., Ex. 1006, 1 (indicating “doc.: IEEE 802.11-
`03/0513r0”). The pages ofJeon also include a footer i