Trials@uspto.gov
`571-272-7822
`
`Paper 16
`Date: June 24, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS AMERICA,INC., AND SAMSUNG
`ELECTRONICS Co., LTD.,
`Petitioner,
`
`V.
`
`COBBLESTONE WIRELESS, LLC,
`Patent Owner.
`
`IPR2024-00319
`Patent 8,891,347 B2
`
`Before NATHAN A. ENGELS, NORMAN H. BEAMER,and
`RUSSELLE. CASS, Administrative Patent Judges.
`
`CASS, Administrative Patent Judge.
`
`DECISION
`Denying Institution of /nter Partes Review
`3S US.C. § 314
`
`

`

`IPR2024-00319
`Patent 8,891,347 B2
`
`A. Background
`
`I.
`
`INTRODUCTION
`
`Samsung Electronics America, Inc., and Samsung Electronics Co.,
`
`Ltd. (collectively, “Petitioner’’) filed a Petition requesting an inter partes
`
`review of claims 1-4, 6-12, 14-17, and 19-23 of U.S. Patent No. 8,891,347
`
`B2 (Ex. 1001, “the ’347 patent”). Paper 3 (“Pet.’’), 3. Cobblestone
`
`Wireless, LLC (“Patent Owner’) filed a Preliminary Response. Paper 13
`
`(“Prelim. Resp.”). With our permission, Petitioner filed a Preliminary Reply
`
`(Paper 14), and Patent Ownerfiled a Preliminary Sur-reply (Paper 15).
`
`An inter partes review may notbeinstituted unlessit is determined
`
`that “the information presented in the petition filed under section 311 and
`
`any responsefiled under section 313 showsthat there is a reasonable
`
`likelihoodthat the petitioner would prevail with respect to at least 1 of the
`
`claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also
`
`37 C.F.R § 42.4(a) (2021) (“The Boardinstitutes the trial on behalf of the
`
`Director.”). The reasonable likelihood standard is “a higher standard than
`
`mere notice pleading,” but “lower than the ‘preponderance’ standard to
`
`prevail in a final written decision.” Hulu, LLC v. Sound View
`
`Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019)
`
`(precedential).
`
`For the reasons provided below and based on the record before us, we
`
`determine that Petitioner has not established a reasonable likelihood that any
`
`of the challenged claims are unpatentable. Accordingly, we do notinstitute
`
`an inter partes review based onthe Petition.
`
`

`

`IPR2024-00319
`Patent 8,891,347 B2
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`B. Real Parties in Interest
`
`Petitioner identifies Samsung Electronics America, Inc. and Samsung
`
`Electronics Co., Ltd. as real parties in interest. Pet. 73. Petitioner also states
`
`that, “[o]ut of an abundance of caution and to avoid additional issues
`
`associated with real parties-in-interest, Petitioner[] likewise identifies] T-
`
`Mobile USA,Inc., AT&T Services Inc., AT&T Corp., AT&T Mobility
`
`LLC,and Cellco Partnership d/b/a Verizon Wireless because Petitioner[’s]
`
`products are accused of infringementin their respective patent infringement
`
`actions.” /d. at 73-74. Patent Owner namesitself as the real party in
`
`interest. Paper 7, 2.
`
`C. Related Proceedings
`
`Both parties identify, as matters involving or related to the °347
`
`patent, the following district court proceedings: Cobblestone Wireless, LLC
`
`v. T-Mobile USA, Inc., No. 2:22-cv-00477 (E.D. Tex.); Cobblestone
`
`Wireless, LLC v. Cellco Partnership d/b/a Verizon Wireless, No. 2:22-cv-
`
`00478 (E.D. Tex.); Cobblestone Wireless, LLC v. AT&T Inc., No. 2:22-cv-
`
`00474 (E.D. Tex.); and Cobblestone Wireless, LLC v. Samsung Electronics
`
`Co., No. 2:23-cv-00285 (E.D. Tex.). Pet. 74; Paper 7, 2. Also, T-Mobile
`
`USA,Inc., AT&T Services Inc., AT&T Corp., AT&T Mobility LLC, Cellco
`
`Partnership d/b/a Verizon Wireless, Nokia of America Corporation, and
`
`Ericsson Inc. filed a petition on December 4, 2023, challenging the ’347
`
`patent in IPR2024-00136.
`
`D. The ’347 Patent (Ex. 1001)
`
`The °347 patent relates to a method for wireless communication in a
`
`system including a transmitter, a receiver, and multiple propagation paths
`
`formed betweenthe transmitter and the receiver that are capable of carrying
`
`

`

`IPR2024-00319
`Patent 8,891,347 B2
`
`a signal transmitted by the transmitter to the recetver. Ex. 1001, code (57).
`
`The method performs a channel estimation ofa first signal from the
`
`transmitter on one propagation path to obtain parameter information on the
`
`propagation path, predistorts a second signal at the transmitter according to
`
`the channel estimation, and transmits the predistorted signal from the
`
`transmitter to the receiver via the propagation path.
`
`/d.
`
`A schematic representation of a wireless communication system
`
`capable of performing the claimed method is shown in Figure 1, reproduced
`
`below.
`
`
`
`Figure | is a schematic representation of a wireless communication system
`capable of performing the claimed method. Ex. 1001, Fig. 1, 2:45-47.
`
`Asthe *347 patent explains, Figure 1 “illustrates a single-link
`
`communication scenario between a base station which is configured so as to
`
`act as a transmitter 110 and a mobile station which is configured so as to act
`
`as areceiver 150.” Ex. 1001, 3:23-26. Between transmitter 110 and
`
`receiver 150 “are a numberof buildings 120—124, whichact as scatterers and
`
`bouncing points of communication signals traveling between the transmitter
`
`110 and the receiver 150 via propagation paths 170, 175, and 180.” /d. at
`
`

`

`IPR2024-00319
`Patent 8,891,347 B2
`
`3:26-30. These propagation paths “are different in delay, direction of
`
`arrival, direction of departure and Doppler frequency,” and the signals
`
`traveling along these paths “experience different distortions” so that the
`
`same signal traveling along these paths “mayarrive at the receiver with
`
`different phases.” /d. at 3:47—50, 7:44-46. As a result, “[t]he resulting
`
`multiple replica of the originally transmitted signals are added at the receiver
`
`150, either destructively or constructively.” Jd. at 7:47—49.
`
`The °347 patent explains that “[t]ypically, equalization techniques
`
`knownin the art are used in the receivers 150 to recoverthe original
`
`transmitted signal by removing the distortions.” Ex. 1001, 7:50—52.
`
`“TU]nlike the equalization technique which corrects the distortion at the
`
`receiver 150 after receiving the technique,” the system of the ’347 patent
`
`“adds a pseudo ‘distortion’ before the signals are transmitted at the
`
`transmitter 110.” /d. at 7:63-67. “These ‘pre-distorted’ signals,” the ?347
`
`patent explains, “are then transmitted in such a waythat the signal distortion
`
`can be successfully removed while propagating.” /d. at 7:67—-8:3.
`
`The °347 Patent’s pre-distortion process is shown in moredetail in
`
`Figure 4, reproduced below.
`
`

`

`IPR2024-00319
`Patent 8,891,347 B2
`
`.
`
`aeroMae
`et?
`
` Haceving th
`
`[AMANAMAAINASMANANNANAMNASNAANG
`
`NANAAAIAHAANAMARNASMAANAS
`
`riG. 4
`
`As shown in Figure 4, the system first performs a channel estimation of the
`
`first signal to obtain path parameter information of the propagation path
`
`(step 410). Ex. 1001, Fig. 4, 8:4—7. Next, the transmitter transmits a first
`
`signal to the receiver via a propagation path (step 420).
`
`/d. at Fig. 4, 8:7-9.
`
`The receiver receivesthe first signal and performs a channel estimation
`
`algorithm to obtain estimates of the delay, Doppler frequency, direction of
`
`atrival, direction of departure, and complex amplitude for each of the
`
`propagation paths (step 430).
`
`/d. at Fig. 4, 8:11-16. The receiver then sends
`
`the channel estimation to the transmitter via the propagation path.
`
`/d. at
`
`Fig. 4, 9:1-3. Then, for the next frame or block to transmit, the transmitter
`
`“pre-distorts” a second signal and generates multiple signal replica with
`
`

`

`IPR2024-00319
`Patent 8,891,347 B2
`
`appropriate settings of the transmitting time, transmitting pace and
`
`directions, receiving directions, and complex weight of the signal (step 450).
`
`Id. at Fig. 4, 9:6-10. The transmitter sums up and transmits these “pre-
`
`distorted” signal replica (step 460), which are received by the receiver (step
`
`A470). Id. at Fig. 4, 9:12-14.
`
`ik. Claim 1
`
`Of challenged claims 1-4, 6-12, 14-17, and 19-23, claims 1, 8, 15,
`
`and 19 are independent. Challenged claim 1 is illustrative, and is
`
`reproduced below.
`
`[1.0] A method for wireless communication in a system
`including a transmitter, a receiver, and a plurality of
`propagation paths formed betweenthe transmitter and the
`receiver which are capable of carrying a signal transmitted by
`the transmitter to the receiver, the method comprising:
`
`[1.1] transmitting a first signal from the transmitter to the
`receiver via a first propagation path of the plurality of
`propagation paths;
`
`[1.2] receiving thefirst signal at the receiver;
`
`[1.3] performing channel estimation based onthefirst signal
`to obtain path parameter information ofthefirst
`propagation path;
`
`[1.4] sending the channel estimation that includes the path
`parameter information from the receiver to the transmitter
`via the first propagation path;
`
`[1.5] predistorting a second signal at the transmitter in a time
`domain, a frequency domain, and a spatial domain,
`according to the channel estimation based onthefirst
`signal;
`
`[1.6] transmitting the predistorted second signal from the
`transmitter to the receiver via the first propagation path;
`and
`
`[1.7] receiving the predistorted second signal at the receiver.
`
`

`

`IPR2024-00319
`Patent 8,891,347 B2
`
`Ex. 1001, 16:40—61 (indents and bracketed paragraph identifiers added).
`
`I’. Applied References
`
`Petitioner relies upon the following references:
`
`Stefania Sesia, “LTE: The UMTS Long Term Evolution
`from Theory to Practice,” Second Edition, published by Wiley
`(Ex. 1003, “Sesia’’);
`
`Forenza, US 8,654,815 B1, issued Feb. 18, 2014
`(Ex. 1014, “Forenza”).
`
`Pet. iv, 3. Petitioner submits declarations from Kevin C. Almeroth, Ph.D
`
`(Ex. 1005) and Sylvia Hall-Ellis (Ex. 1004).
`
`G. Asserted Ground of Unpatentability
`
`Petitioner challenges the patentability of claims 1-4, 6-12, 14-17, and
`
`19-23 of the ’347 patent on the following grounds:
`
`
`
`1-4, 6-12, 14-17,
`1933
`
`1-4, 6-12, 14-17,
`
`1
`
`103(a)
`
`.
`
`Sesia
`
`Pet. 3.
`
`' The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), included revisions to 35 U.S.C. § 103 that becameeffective
`after the filing of the application for the ’136 patent. For purposesofthis
`Decision, we apply the pre-AIA version of 35 U.S.C. § 103.
`
`8
`
`

`

`IPR2024-00319
`Patent 8,891,347 B2
`
`Il.
`
`DISCUSSION
`
`A. Principles ofLaw
`
`With respect to claim construction, a claim “shall be construed using
`
`the same claim construction standard that would be used to construe the
`
`claim in a civil action under 35 U.S.C. § 282(b).” 37 C.F.R. § 42.100(b).
`
`A claim is unpatentable under 35 U.S.C. § 103 if “the differences
`
`between the subject matter sought to be patented and the prior art are such
`
`that the subject matter as a whole would have been obviousat the time the
`
`invention was madeto a person having ordinary skill in the art to which said
`
`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`
`(2007). The question of obviousnessis resolved on the basis of underlying
`
`factual determinations, including (1) the scope and content of the priorart;
`
`(2) any differences between the claimed subject matter and the priorart;
`
`(3) the level of skill in the art; and (4) where in evidence, objective evidence
`
`of non-obviousness.?_ Graham v. John Deere Co. ofKansas City, 383 U.S.
`
`1, 17-18 (1966). When evaluating a combination of teachings, we must also
`
`“determine whether there was an apparent reason to combine the known
`
`elements in the fashion claimed by the patent at issue.” ASR, 550 U.S. at
`
`418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Whether a
`
`combination of prior art elements would have produced a predictable result
`
`weighsin the ultimate determination of obviousness. /d. at 416-417.
`
`In an inter partes review,the petitioner must show with particularity
`
`why each challenged claim is unpatentable. Harmonic, Inc. v. Avid
`
`Technology, Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016); 37 C.F.R.
`
`” Atthis stage of the proceeding, Patent Owner has not presented objective
`evidence of non-obviousness.
`
`

`

`IPR2024-00319
`Patent 8,891,347 B2
`
`§ 42.104(b). The burden of persuasion never shifts to Patent Owner.
`
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378
`
`(Fed. Cir. 2015).
`
`Weanalyze the challenges presented in the Petition in accordance
`
`with the above-stated principles.
`
`B. Level ofOrdinary Skill in the Art
`
`Relying on Dr. Almeroth, Petitioner argues that one of ordinary skill
`
`“would have had at least a bachelor’s degree in electrical engineering,
`
`computer engineering, computer science, physics, or the equivalent, and at
`
`least two years of experience working in the field.” Pet. 6 (citing Ex. 1005
`
`4.41). Petitioner further states that “[r]elevant work experience would
`
`include experience with cellular telecommunications and networking, radio-
`
`access network architectures, protocols, and signal propagation in wireless
`
`networks,” andthat “[m]ore education can supplementpractical experience
`
`and vice versa.” Id.
`
`Atthis stage of the proceeding, Patent Ownerdoesnotset forth a
`
`proposed level of ordinary skill in the art. See Prelim. Resp.
`
`For purposesof this Decision, we adopt the assessmentof the level of
`
`ordinary skill in the art proposed by Petitioner and not disputed by Patent
`
`Owneras reasonable and consistent with the prior art. See Okajima v
`
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir 2001) (the prior art may reflect an
`
`appropriate level of skill in theart).
`
`10
`
`

`

`IPR2024-00319
`Patent 8,891,347 B2
`
`C. Ground 1:* Asserted Obviousness ofClaims 1-4, 6-12, 14-17, and
`19-23 Based on Sesia
`
`Petitioner contends that claims 1—4, 6-12, 14-17, and 19-23 would
`
`have been obvious over Sesia. Pet. 3, 28-57. Patent Owner disagrees.
`
`Prelim. Resp. 2—21.
`
`1. Overview ofSesia (Ex. 1003)
`
`Sesia is a book entitled “LTE — The UMTS Long Term Evolution
`
`From Theory to Practice,” authored by Stefani Sesia, Issam Toufik, and
`
`Matthew Baker, and published by Wiley with a copyright date of 2011.
`
`Ex. 1003, 1, 6.4 Sesia explainsthat it “provides a thorough, authoritative
`
`and complete tutorial of the LTE system, now fully updated and extended to
`
`include LTE-Advanced,” and “gives a detailed explanation of the advances
`
`made in our theoretical understanding andthe practical techniques that will
`
`ensure the success of this ground-breaking new radio access technology.”
`
`Id. at 29. One aim of Sesia is “to chart an explanatory course through the
`
`LTE specifications, to support those who design LTE equipment.” /d. at 32.
`
`Sesia discloses the use of a base station (also referred to as an
`
`eNodeB) in communication with one or more mobile devices or user
`
`equipment (UE). Ex. 1003, 480. Sesia illustrates in Figure 20.1, reproduced
`
`below,a base station with an omnidirectional antenna that transmits a signal
`
`along three different propagation paths, shown as Path 1, Path 2, and Path 3.
`
`> Here, and elsewhere in the Decision,the identification of the grounds using
`designations such as “Ground 1” and “Ground 2”refers to the designation of
`the groundsas presented in the Petition.
`4 The cited pages of Sesia refer to the page numbersaddedbyPetitioner, not
`the original pages in the book.
`
`11
`
`

`

`IPR2024-00319
`Patent 8,891,347 B2
`
`
`
`Poser |Tha... Tlay
`
`my
`
`Bs
`
`Bigare 20. 1: Maltipath propagation and POR
`
`Sesia’s Figure 20.1 showsa base station (right) with an antenna that
`transmits a signal along three propagation paths, Path 1, Path 2, and Path 3.
`Ex. 1003, 480-481.
`
`Sesia explains that, as shown in Figure 20.1, “[t]he transmitted signal
`
`traverses three paths with different delays.” /d. at 480.
`
`Sesia also explains that LTE “is a coherent communication system,”
`
`meaning that its detection method “exploits channel knowledge.” Ex. 1003,
`
`207-208. “Coherent detection,” Sesia states, “can make use of both
`
`amplitude and phase information carried by the complex signals, and not of
`
`only amplitude information as with non-coherent detection.” /d. at 207.
`
`“Optimal reception by coherent detection,” according to Sesia, “typically
`
`requires accurate estimation of the propagation channel.” /d. “A common
`
`and simple way to estimate the channelis to exploit knownsignals which do
`
`not carry any data” and, “[i]n order to estimate the channel as accurately as
`
`possible, all correlations between channel coefficients in time, frequency and
`
`space should be taken into account.” /d. at 208. LTE can use reference
`
`signals embeddedinto a transmitted signal to perform these estimations.
`
`/d.
`
`at 208-209.
`
`12
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`

`

`IPR2024-00319
`Patent 8,891,347 B2
`
`Sesia also includes sections describing “frequency-domain channel
`
`estimation,” “time-domain channel estimation,” and “spatial-domain channel
`
`estimation.” Ex. 1003, 220-227. Sesia discloses that a UE can report these
`
`channel estimations to an eNodeB using implicit feedback, which “provides
`
`an implicit representation of the channel consisting of an indication of the
`
`data rate that could be achieved if the eNodeB used a certain precoder.” /d.
`
`at 316, 704. This can be compared to “explicit feedback,” which is “not
`
`supported in LTE or LTE-Advanced,” in which “a UE would instead
`
`explicitly report a quantized representation of the physical CSI [(Channel
`
`State Information)] without making assumptions aboutthe nature of the
`
`eNodeB precorder.” /d. at 705. Sesia further discloses that LTE supports
`
`beamforming techniques.
`
`/d. at 295-298.
`
`2. Analysis ofIndependent Claim 1
`
`For the reasons discussed below, we determine, based on the present
`
`record, that Petitioner has not made a sufficient showing for limitations [1.3]
`
`and [1.5] for purposesofinstitution.
`
`a) [1.3] performing a channel estimation basedon thefirst signal
`to obtain path parameter information of the first propagation path;
`
`Petitioner bases its argumentasto this limitation on a construction of
`
`the term “path parameter information”that it represents is “Patent Owner’s
`
`apparent interpretation of” this term “in the co-pending district court
`
`litigations” based on Patent Owner’s infringement contentions, althoughit
`
`acknowledgesthat “Patent Ownerhas not formally provided [a] proposed
`
`construction[]” of this term. Pet. 10.
`
`More specifically, Petitioner arguesthat “[i]n the co-pending district
`
`court litigation, Patent Ownerinterprets “path parameter information’
`
`13
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`

`IPR2024-00319
`Patent 8,891,347 B2
`
`broadly to capture any channelstate information feedback, regardless of
`
`whether that channel state information is an explicit or implicit channel
`
`estimation.” Pet. 11. However, although Petitioner relies on this
`
`construction, Petitioner also criticizes the construction, asserting that “the
`
`[°347] patent expressly excludes implicit estimation from path parameter
`
`information.” /d. (emphasis added). Petitioner also does not assert that
`
`Patent Owner’s purported construction represents the plain and ordinary
`
`meaning of the claim language, and Petitioner indeed suggests otherwise by
`
`characterizing this construction as a “broad interpretation” and
`
`distinguishing it from other terms “not expressly construed” which “should
`
`be given their ordinary and customary meaning.” /d. at 10-12. In its claim
`
`construction discussion, Petitioner does not offer alternative constructions
`
`but instead exclusively relies on the construction it ascribes to Patent Owner
`
`and criticizes.
`
`/d.
`
`Petitioner further introduces the testimony of Dr. Almeroth that the
`
`construction it relies on in this proceeding (based onits interpretation of
`
`Patent Owner’s infringement contentions) “is construing “path parameter
`
`information’ broader than, and contrary to its plain and ordinary
`
`meaning.” Ex. 1005 4 63 (emphasis added). Dr. Almeroth states that the
`
`proposed construction “include[s] any channelstate information feedback,
`
`regardless of whether that channel state information is an explicit or implicit
`
`channel estimation,” but “[a]n implicit estimation is not path parameter
`
`information as a [person of ordinary skill in the art] would understand the
`
`term in the ’347 [p]atent.” /d. (citing Ex. 1001, 11:60—12:6, 14:18-21;
`
`Ex. 1006, 7-8, Ex. 1009, 7-8; Ex. 1010, 7-8; Ex. 1015, 6-7). According to
`
`Dr. Almeroth, this is because the ’347 patent distinguishes between “path
`
`14
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`IPR2024-00319
`Patent 8,891,347 B2
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`parameter information”and “codebooks,” which hestates “1s an implicit
`
`measurement because conditions of the channel may be implied by the value
`
`of the codebook.” Jd. ¥ 64. “Thus,” Dr. Almeroth testifies, one of ordinary
`
`skill “would understand that implicit measurements can be used to ‘imply’
`
`the condition of the path but are not measurements of the path itself.” /d.
`
`Whenapplying Sesia to limitation [1.3], Petitioner makes clear that it
`
`is relying on Patent Owner’s purported construction of “path parameter
`
`information.” Pet. 34-36. Specifically, Petitioner asserts that:
`
`Based on Sesia’s disclosure, a [person of ordinary skill in the
`art] would understand, under Patent Owner’s apparent
`interpretation ofthe claims, that the information that is
`obtained from performing channel estimation on a reference
`signal and subsequently provided to the eNodeB by the UE as
`either implicit or explicit feedback corresponds with the
`claimed “path parameter information.” Furthermore, under
`Patent Owner’s apparent interpretation ofthe claims, based
`on Sesia’s disclosure, a [person of ordinary skill in the art]
`would understandthat this information is ‘path parameter
`information ofthe first propagation path” given that channel
`estimation attempts to define the channel model of a
`propagation path.
`
`Id. at 35 (emphasis added) (citing Ex. 1005 4 135); see Ex. 1005 4 135
`99 66
`
`(explaining that Sesia discloses “path parameter information”
`
`“under the
`
`Patent Owner’s apparentinterpretation of the claims’). At the end of the
`
`discussion of this claim element, Petitioner states that Sesia discloses or
`
`teaches the claim language “under either Patent Owner’s apparent
`
`interpretation or the plain and ordinary meaningof the term,” but
`
`Petitioner never explains whatthe plain and ordinary meaning of the term is,
`
`or howthat plain and ordinary meaningis disclosed by Sesia. Pet. 36
`
`(emphasis added); see id. at 11-12 (discussing only Patent Owner’s
`
`purported construction in the claim construction section); Ex. 1005 4 137
`
`15
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`IPR2024-00319
`Patent 8,891,347 B2
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`(repeating Petitioner’s statement that Sesia discloses “path parameter
`99 66
`
`information”
`
`“undereither Patent Owner’s apparentinterpretation or the
`
`plain and ordinary meaning of the term,” but not explaining whatthe plain
`
`and ordinary meaningis).
`
`To support its reliance on Patent Owner’s purported construction of
`
`“path parameter information,” Petitioner cites several cases for the
`
`proposition that a petition may rely on a claim construction from Patent
`
`Ownerthat the petitioner subjectively believes is incorrect. Pet. 10. For
`
`example, Petitioner cites /OX Genomics, Inc. v. Bio-Rad Labs., Inc.,
`
`IPR2020-00086, Paper 8 at 17—22 (PTAB Apr. 27, 2020) for the proposition
`
`that 37 C.F.R. § 42.104(b) “does not prohibit Petitioner from submitting a
`
`claim construction it believes is incorrect and relying on that construction to
`
`show howthe claim is unpatentable.” /d. Petitioner also relies on Donnelly
`
`Distribution LLC vy. Russo Trading Co., Inc., 1PR2019-00761, Paper 8 at 17—
`
`18 (PTAB Sept. 6, 2019). Jd.
`
`In its Preliminary Reply, Petitioner again arguesthat it is permissible
`
`for a petitioner to rely on a claim construction that it subjectively disagrees
`
`with, and Petitioner disputes that “by disagreeing with these constructions,
`
`Patent Owneris entitled to the extreme remedy of discretionary denial for
`
`failure to satisfy Rule 42.104(b)(3).” Prelim. Reply 1-3. Specifically,
`
`Petitioner cites Philip Morris Products, S.A. v. Rai Strategic Holdings, Inc.,
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`IPR2020-00921, Paper 13 at 42-44 (PTAB Aug. 5, 2021) for the proposition
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`that Rule 42.104(b)(3) “does not require a petitioner to express a subjective
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`belief in the correctness of its proffered claim constructions” and that a
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`petitioner can “rely[] on claim constructionsthat it believes are incorrect.”
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`Id. at 1-2. Petitioner also cites additional cases for this proposition,
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`IPR2024-00319
`Patent 8,891,347 B2
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`including Google LLC V. AGIS Software Development, LLC, IPR2018-
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`01085, Paper 10 at 10 (PTAB Nov.19, 2018); General Electric Co. v.
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`Vestas Wind Sys. A/S, IPR2018-00928, Paper 9 at 12-17 (PTAB Nov. 5,
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`2018); Apple, Inc. v. AGIS Software Development, LLC, IPR2018-00821,
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`Paper 9 at 10 (PTAB Oct. 23, 2018). Jd. at 2.
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`Patent Owner respondsthat the Petition “rests on an infirm
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`foundation” because Petitioner raises an invalidity ground “that they state
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`solely and exclusively relies upon Patent Owner’s alleged claim construction
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`positions” and “make[s] clear in the Petition, that they believe the sole
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`construction[] they rely on [is] dead wrong.” Prelim. Resp. 2 (emphasis in
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`original). Patent Ownerarguesthat “the Board’s caselaw, and the Office’s
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`policy make clear”that “a petitioner cannot demonstrate a reasonable
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`likelihood of prevailing based on constructions it expressly disagrees with in
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`its petition.” /d. at 2—3. Patent Ownerfurther arguesthat, “at least as to
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`limitation 1.3, Petitioner[] rel[ies] on a claim interpretation that no one
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`agrees with” and that “Patent Owner’s actual claim construction positions
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`are different from the strawman construction that Petitioner[] ha[s] relied
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`upon.” /d. at 3. Patent Owner distinguishes the Petition from situations
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`wherea petitioner “explain[s] why a claim is invalid underalternative claim
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`constructions, e.g., its proposed construction and a construction proffered by
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`the patent owner.” /d. at 2.
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`Patent Owneralso cites Board decisions for the proposition that “a
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`petitioner cannotsatisfy its burden of proof under constructionsit insists are
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`wrong.” Prelim. Resp. 6. For example, Patent Owner cites Hologic, Inc. v.
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`Enzo Life Sciences, Inc., [PR2018-00019, Paper 21 (PTAB Nov.28, 2018)
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`for the proposition that a petitioner “does not satisfy Rule 42.104(b)(3)
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`IPR2024-00319
`Patent 8,891,347 B2
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`when, in a proceeding applying the Philips claim-construction standard, it
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`‘expressly disagree[s] with its proffered constructions.’” /d. at 7 (citing
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`Hologic at 2, 5—7) (alteration in original). Patent Owneralso cites additional
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`cases in support of this proposition. /d. at 9-10 (citing Orthopediatrics
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`Corp. v. K2M, Inc., IPR2018-01548, Paper 9 at 9-10 (PTAB Mar. 1, 2019)
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`(denying institution where “Petitioner’s contentions are limited to how the
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`claimsat issue should not be construed” (emphasis omitted)), Samsung
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`Elecs. ofAm., Inc. vy. Uniloc 2017 LLC, IPR2020-00046, Paper 6 at 10
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`(PTAB Apr. 1, 2020) (“Weexercise our discretion and decline Petitioner’s
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`invitation to adopt allegedly incorrect claim constructions and institute an
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`inter partes review on the basis of those constructions.”’), and Netflix, Inc. v.
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`GoTV Streaming, LLC, IPR2023-00757, Paper 18 at 9 (“In Hologic, the
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`Board decided that a party in an Office proceeding may not “expressly
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`disagree’ with a claim-construction position in the proceedingandstill
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`advance the disagreed-with position in the proceeding.”’)).
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`Based on the present record, Petitioner has not demonstrated a
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`reasonablelikelihood that the challenged claims are unpatentable. Petitioner
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`bases its showing as to limitation [1.3] upon a claim construction of “path
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`parameter information”that it ascribes to Patent Owner, and then expressly
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`criticizes as being inconsistent with the °347 patent Specification. Pet. 14—
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`15. Additionally, Petitioner does not assert that the applied construction is
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`the plain and ordinary meaning of the claim term, or provide reasoning or
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`evidence showing why the applied construction is correct. /d. Moreover,
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`Patent Owner does not agree with the applied construction in its submissions
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`in this proceeding.
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`Additionally, Dr. Almeroth testifies that the applied construction
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`differs from and is broader than the ordinary meaning of “path parameter
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`information,” and is not consistent with the ’347 patent Specification, but
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`that he used this construction in his analysis nonetheless. Ex. 1005 {| 61-
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`63. Specifically, Dr. Almeroth testifies as follows:
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`61....[FJor all but two claim terms consideredin this
`Declaration, I have applied the plain and ordinary meaning of
`those terms as ... would have been interpreted by a [person of
`ordinary skill in the art] at the time the invention was made....
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`The two exceptions arefor the terms: “path
`62.
`parameter information”and “predistorting a secondsignal at
`the transmitter in a time domain, frequency domain, and a
`spatial domain.” While I understand that the Patent Ownerhas
`not formally provided proposed constructions, Patent Owner’s
`infringement contentionsindicate to me that the Patent
`Owner has taken a broad interpretation of the claimsthatis
`not consistent with the plain and ordinary meaning that
`should be considered whenassessing the validity of the
`Challenged Claims. As such, while I do not necessarily agree
`with these interpretations, I will consider them in rendering
`my below opinions.
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`In Patent Owner’s infringement contentions,
`63.
`Patent Owneris construing “path parameter information”
`broader than, and contrary to its plain and ordinary meaning.
`Specifically, it is seeking to construe the term to include any
`channel state information feedback, regardless of whether that
`channel state information is explicitly or implicit channel
`estimation. An implicit estimation is not path parameter
`information as a [person of ordinary skill in the art] would
`understand the term in the ’347 [p]atent.
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`Ex. 1005 {4 61-63 (emphasis added,citations omitted); see id. J] 64-66
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`(providing further explanation as to why the applied construction is not
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`consistent with the plain and ordinary meaning of the term or the °348 patent
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`Specification). Both Petitioner and Dr. Almeroth also confirm that they used
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`IPR2024-00319
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`the construction ascribed to Patent Owner(and both believe to be incorrect)
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`in their analysis. Pet. 35 (explaining that the “path parameter information”
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`limitation is met “under Patent Owner’s apparentinterpretation of the
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`claims”); Ex. 1005 4 135 (same).
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`Underthese facts, Petitioner has failed to set forth a sufficient basis to
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`support the claim construction it relies on and, consequently hasfailed to
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`establish a reasonable likelihood that its unpatentability arguments, which
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`are based on that construction, have merit.
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`Our conclusion in this regard is consistent with the Board’s prior
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`decisions in Hologic, Orthopediatrics, and Samsung, upon which Patent
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`Ownerrelies. See Prelim. Resp. 10-14. However, we note that our
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`determination doesnot rely on discretionary denial or exclusively on Rule
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`42.104(b)(3), but rather it is based on Petitioner’s failure to demonstrate a
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`reasonablelikelihood that limitation [1.3] 1s obvious based on Sesia. Where
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`a petitioner specifically relies on a particular construction of a claim term in
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`order to demonstrate unpatentability, particularly a construction different
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`from the ordinary meaning, that claim construction is part of the
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`unpatentability analysis, and the petitioner must provide a sufficient basis to
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`support that construction. See, e.g., Corephotonics, Ltd. v. Apple Inc., 84
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`F 4th 990, 1003 (Fed. Cir. 2023) (“In determining whethera claim is invalid
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`as obvious, we comparethe priorart to the claim language, and if necessary,
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`after the claim language has been properly construed when the meaning or
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`scope is in dispute.”). Here, Petitioner has not done so because:
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`(1) Petitioner does not rely on the plain and ordinary meaning of the term,
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`and its own experttestifies that its construction is contrary to the plain and
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`ordinary meaning; (2) Petitioner offers no intrinsic or extrinsic evidence that
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`the construction it relies on is correct; and (3) Petitioner and its expert assert
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`that the proffered construction is inconsistent with the °347 patent
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`Specification.
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`In reaching our decision here, we distinguish this case from situations
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`wherea petitioner relies on the ordinary meaning of a claim term, offers
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`alternative constructions of a claim term, or relies on a construction agreed
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`upon by the parties in the proceeding at issue. None ofthose situationsis
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`presentin this case.
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`Additionally, we find insufficient Petitioner’s conclusory statement
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`that Sesia discloses limitation [1.3] “under either Patent Owner’s apparent
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`interpretation or the plain and ordinary meaning of the term.” Pet. 36
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`(emphasis added). Neither Petitioner nor Dr. Almeroth explain what they
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`believe the plain and ordinary meaning of “path parameter information”is,
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`what the support would be for any such meaning, or how