Trials@uspto.gov
`571-272-7822
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`Paper 57
`Entered: November 30, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`MARVELL SEMICONDUCTOR, INC.,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES I LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00553
`Patent 6,754,195 B2
`____________
`
`
`
`
`
`Before THOMAS L. GIANNETTI, JAMES A. TARTAL, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`I. INTRODUCTION
`A. Background
`Marvell Semiconductor, Inc. (“Petitioner”) filed a substitute corrected
`Petition (Paper 13, “Pet.”) pursuant to 35 U.S.C. §§ 311–319 to institute an
`inter partes review of claims 1–23 of U.S. Patent No. 6,754,195 (“the ’195
`
`
`571-272-7822
`
`
`
`
`Paper 57
`Entered: November 30, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`MARVELL SEMICONDUCTOR, INC.,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES I LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00553
`Patent 6,754,195 B2
`____________
`
`
`
`
`
`Before THOMAS L. GIANNETTI, JAMES A. TARTAL, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`I. INTRODUCTION
`A. Background
`Marvell Semiconductor, Inc. (“Petitioner”) filed a substitute corrected
`Petition (Paper 13, “Pet.”) pursuant to 35 U.S.C. §§ 311–319 to institute an
`inter partes review of claims 1–23 of U.S. Patent No. 6,754,195 (“the ’195
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`patent”). After consideration of a Preliminary Response (Paper 15) filed by
`Intellectual Ventures I LLC (“Patent Owner”) and a Request for Rehearing
`filed by Petitioner, the Board instituted trial with respect to claims 1–23 on
`February 20, 2015. Paper 19.
`During the trial, Patent Owner timely filed a Patent Owner Response
`(Paper 31, “PO Resp.”), and Petitioner timely filed a Reply to the Patent
`Owner Response (Paper 43, “Reply”). Patent Owner also filed observations
`on the cross-examination of Petitioner’s Witness, Kevin Almeroth, Ph. D.
`(Paper 52), and Petitioner filed a response to Patent Owner’s observations
`(Paper 55). An oral hearing was held on September 11, 2015. Paper 56.
`We have jurisdiction under 35 U.S.C. § 6(c). This Decision is a Final
`Written Decision under 35 U.S.C. § 318(a) as to the patentability of the
`claims on which we instituted trial. Based on the record before us, Petitioner
`has shown, by a preponderance of the evidence, that claims 1–3, 5, 6–10, 13,
`18, and 23 of the ’195 patent are unpatentable.
`
`
`B. Related Proceedings
`The parties identify the following civil actions involving the ’195
`patent: Intellectual Ventures I LLC v. Canon Inc., 1:13-cv-473 (D. Del.);
`Intellectual Ventures I LLC v. Ricoh Americas Corp., 1:13-cv-474 (D. Del.);
`and Intellectual Ventures I LLC v. Nikon Corp., 1:11-cv-1025 (D. Del.).
`Pet. 1; Paper 8, 2. The ’195 patent is also the subject of IPR2014-00552, in
`which we instituted trial with respect to claims 1–23 on December 3, 2014.
`Marvell Semiconductor, Inc. v. Intellectual Ventures I LLC, Case IPR2014-
`00552, slip op. (PTAB Dec. 3, 2014) (Paper 16).
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`C. The ’195 Patent (Ex. 1101)
`According to the ’195 patent, different wireless protocols, such as the
`802.11a and 802.11b protocols defined by the Institute of Electrical and
`Electronics Engineers, Inc. (“IEEE”), may be incompatible, particularly as a
`result of their operation in different frequency bands. Ex. 1001, col. 1,
`ll. 21–33. The ’195 patent addresses this incompatibility by providing a
`mixed-waveform configuration that includes a first portion modulated
`according to a single-carrier scheme with a preamble and header, and a
`second portion modulated according to a multi-carrier scheme. Id. at col. 2,
`ll. 44–52.
`Figure 3 of the ’195 patent is reproduced below.
`
`Figure 3 illustrates a mixed-signal packet disclosed by the ’195 patent.
`Packet 301 includes Barker preamble 303 and Barker header 305 that are
`transmitted with a single carrier, and includes one or more orthogonal
`frequency-division multiplexing (“OFDM”) symbols 307 with multi-carrier
`modulation. Id. at col. 7, ll. 23–32. Notably, the packet does not include an
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`OFDM preamble, although the disclosure asserts that “it may still be present
`for both convenience and fine tuning.” Id. at col. 5, ll. 32–33.
`In either case, equalizer information obtained during acquisition of the
`single-carrier portion may be reused, enabling “complete continuity between
`the two signal segments, including AGC (power), carrier phase, carrier
`frequency, timing and spectrum (multi-path).” Id. at col. 5, ll. 39–41.
`Specifically, the signal is specified so that an estimate of the channel
`impulse response obtained on the single-carrier portion, i.e., on the preamble
`and header, is reusable on the multi-carrier portion, i.e., on the OFDM
`symbols. Id. at col. 7, ll. 44–47.
`
`
`D. Illustrative Claim
`Claim 1, the only independent claim of the ’195 patent, is illustrative
`of the claims at issue:
`1. A wireless communication system that is configured to
`communicate using a mixed waveform configuration,
`comprising:
`a transmitter configured to transmit according to a mixed
`waveform configuration including a first portion modulated
`according to a single-carrier scheme with a preamble and
`header and a second portion modulated according to a multi-
`carrier scheme;
`the waveform being specified so that a channel impulse
`response estimate obtainable from the first portion is reusable
`for acquisition of the second portion; and
`a receiver configured to acquire and receive packets with a
`mixed waveform configuration.
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`E. Grounds of Unpatentability
`Petitioner relies on the following references.
`Böhnke
`US 6,567,374 B1 May 20, 2003
`Agee
`US 6,128,276
`Oct. 3, 2000
`
`Ex. 1113
`Ex. 1115
`
`“Supplement to IEEE Standard for Information technology —
`Telecommunications and information exchange between systems —
`Local and metropolitan area networks — Specific requirements —
`Part 11: Wireless LAN Medium Access Control (MAC) and Physical
`Layer (PHY) specifications: Higher-Speed Physical Layer Extension
`in the 2.4 GHz Band” (IEEE1999) (“IEEE 802.11b”) (Exs. 1006,
`1106)
`
`“Supplement to IEEE Standard for Information technology —
`Telecommunications and information exchange between systems —
`Local and metropolitan area networks — Specific requirements —
`Part 11: Wireless LAN Medium Access Control (MAC) and Physical
`Layer (PHY) specifications: High-speed Physical Layer in the 5 GHZ
`Band” (IEEE 1999) (“IEEE 802.11a”) (Exs. 1007, 1107)
`
`Jean-Lien C. Wu et al., “An Adaptive Multirate IEEE 802.11 Wireless
`LAN” (IEEE 2001) (“Wu”) (Ex. 1108)
`
`Rahman Jamal et al., “Filters” (CRC Press 2000) (“Jamal”) (Exs.
`1014, 1114)
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`We instituted trial based on the following grounds.
`References
`Basis
`Claim(s) Challenged
`Wu and Böhnke
`§ 103(a)
`1
`Wu, Böhnke, IEEE 802.11a, and
`§ 103(a)
`2–6 and 9–22
`IEEE 802.11b
`Wu, Böhnke, IEEE 802.11a,
`IEEE 802.11b, and Jamal
`Wu, Böhnke, IEEE 802.11a,
`IEEE 802.11b, and Agee
`
`§ 103(a)
`
`7 and 8
`
`§ 103(a)
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`II. ANALYSIS
`A. Claim Construction
`The Board interprets claims of an unexpired patent using the broadest
`reasonable construction in light of the specification of the patent in which
`they appear. See 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC,
`793 F.3d 1268, 1277–79 (Fed. Cir. 2015), reh’g en banc denied, 793 F.3d
`1297 (Fed. Cir. 2015); Office Patent Trial Practice Guide, 77 Fed. Reg.
`48,756, 48,766 (Aug. 14, 2012).
`In the Institution Decision, we construed claim 1’s recitation of
`“mixed waveform configuration” as “a communication signal that includes
`at least two portions that are modulated according to different modulation
`schemes,” noting that “the explicit recitation of claim 1 that the mixed
`waveform configuration ‘include[s] a first portion modulated according to a
`single-carrier scheme with a preamble and header and a second portion
`modulated according to a multi-carrier scheme’ is both limiting and entitled
`to patentable weight.” Paper 17, 5–6. We also construed “maintains power,
`carrier phase, carrier frequency, timing, and multi-path spectrum between
`the first and second portions of the waveform,” recited in claim 2, “as
`requiring continuity in the power, carrier phase, carrier frequency, timing,
`and multi-path spectrum between the first and second portions of the
`waveform.” Id. at 6–7.
`We see no reason to modify these constructions based on the positions
`of the parties as developed during the trial, and adopt them for this Final
`Written Decision.
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`B. Availability of Wu as Prior Art
`The ’195 patent claims the benefit of the filing date of Provisional
`Application No. 60/306,438, filed July 6, 2001. Ex. 1101 at [60]. Citing
`testimony by Robert Short, Ph.D., Patent Owner asserts that “the provisional
`application fully supports the claims of the ’195 patent.” PO Resp. 5 (citing
`Ex. 2078 ¶ 40). Petitioner does not contest the assertion. For purposes of
`this Decision, we treat the effective filing date of all claims of the ’195
`patent as July 6, 2001.
`Patent Owner contends that “Petitioner failed to show that Wu was
`publicly available before this date.” Id. As Patent Owner asserts, “[t]he Wu
`reference bears only a copyright date of 2001; it contains no information
`about the month or day of publication or about whether, in fact, it was also
`published in 2001.” Id. at 6
`Petitioner’s evidence that Wu was published before July 6, 2001,
`includes Declarations by Paula Carey, a librarian at the Boston University
`Libraries, and Gerald Grenier, Senior Director of Publishing Technologies
`for the Institute of Electrical and Electronics Engineers. Exs. 3001, 2073.
`Ms. Carey testifies that she has been employed by the Boston University
`Libraries for approximately 36 years, and that, during the period of
`December 2000 to March 2001, she was the Mathematics and Engineering
`Librarian. Ex. 3001 ¶¶ 2, 4. She has “personal knowledge of the Library’s
`normal practices for recording the receipt of and cataloging and shelving of
`conference proceedings received by the library during December 2000 to
`March 2001.” Id. at ¶ 4. With her testimony, Ms. Carey provides a copy of
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`Wu and a screen shot of a computer display showing the catalog record in
`the Library’s database for Wu. Id. at Exs. A, B. Ms. Carey testifies that
`Exhibit B shows that the catalogue record for the Wu reference
`was entered into the Library’s database on March 12, 2001, at
`which time patrons of the Library could have searched for,
`found, and requested a physical copy of the Wu reference, even
`if it was not yet placed on a Library shelf.
`Id. at ¶ 9.
`Because Ms. Carey did not agree to be deposed, Patent Owner cross-
`examined her only after the Board granted Patent Owner’s request to compel
`her deposition (Paper 30) and after filing its Patent Owner Response. In its
`Response, Patent Owner asserts that it “will address the deficiencies in the
`Carey declaration after it has had the opportunity to cross-examine her.” PO
`Resp. 8–9. Nevertheless, Patent Owner did not seek authorization to file any
`paper addressing Ms. Carey’s testimony in light of her cross-examination
`testimony.1 Patent Owner also did not address Ms. Carey’s testimony at the
`oral hearing.
`A reference is established to be a “printed publication” “upon a
`satisfactory showing that such document has been disseminated or otherwise
`made available to the extent that persons interested and ordinarily skilled in
`the subject matter or art, exercising reasonable diligence, can locate it.” In
`
`
`1 After deposing Ms. Carey, Patent Owner sought to submit up to four
`declarations as supplemental information, contending that they were relevant
`to the date of public availability of Wu. See Paper 42, 2. The Board denied
`the request, determining that “the proposed additional declarations do not
`relate directly to the issues raised by Ms. Carey’s declaration and deposition,
`namely, the availability of Wu in the Boston University Library.” Id.
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`re Wyer, 655 F.2d 221, 226 (CCPA 1981) (citations omitted). A key factor
`in determining whether a reference held by a library is sufficiently accessible
`to the public is whether the reference has been adequately indexed by the
`library. Compare In re Hall, 781 F.2d 897 (Fed. Cir. 1986) (doctoral thesis
`indexed and shelved in library is sufficiently accessible to the public to be a
`“printed publication”), with In re Cronyn, 890 F.2d 1158 (Fed. Cir. 1989)
`(indexing of student theses with cards in shoe box inadequate because theses
`could only be found if a student’s name was known). Ms. Carey describes
`the “normal practice” of indexing conference proceedings by the Boston
`University Libraries, which includes entering a catalog record for the
`conference proceeding into a database, after which “patrons . . . can search
`for and find the conference proceeding, and can request a physical copy of
`the conference proceeding.” Ex. 3001 ¶ 5. Ms. Carey explained that this
`“normal practice . . . was generally the same during December 2000 to
`March 2001 as it is today.” Id.
`We credit Ms. Carey’s testimony, which provides a satisfactory
`showing that Wu was made available to the public via the Boston University
`Libraries before the July 6, 2001, effective filing date of the claims of the
`’195 patent. Because public availability of Wu in a single library before the
`critical date is sufficient to qualify Wu as a reference, we do not reach an
`analysis of Mr. Grenier’s testimony. We conclude that Wu is available as
`prior art to the claims of the ’195 patent.
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`C. Obviousness of Independent Claim 1
`over Wu and Böhnke
`
`Wu describes a communication system capable of transmitting data at
`multiple different rates in accordance with the IEEE 802.11b standard. Ex.
`1108, Abstract. Figures 2 and 3 of Wu are reproduced below.
`
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`Figure 2 (top) and Figure 3 (bottom) from Wu illustrate two formats within
`the IEEE 802.11b standard, evident from a comparison of the drawings with
`Figures 127 and 128 of IEEE 802.11b. See Ex. 1106, 20–21. Wu describes
`a scheme in which the data rate is changed dynamically, on a frame-to-frame
`basis rather than on a predetermined basis. Ex. 1008, 411. As illustrated in
`Figures 2 and 3 of Wu, each transmission frame includes a preamble (“PLCP
`Preamble”), a header (“PLCP Header”), and a service data unit (“PSDU”).
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`See id. at 412–14. Petitioner draws a correspondence between (1) the
`portion of Wu’s transmission frame having a preamble and header with the
`“first portion” recited in independent claim 1; and (2) the portion of Wu’s
`transmission frame having the service data unit with the “second portion”
`recited in independent claim 1. Pet. 47–48. As characterized by Petitioner,
`the scheme “uses a channel estimate obtained from the first portion for
`acquisition of the second portion.” Id. at 48 (citing Ex. 1120 ¶¶ 43–47, 65–
`68).
`
`Consistent with our construction of a “mixed waveform
`configuration” as a communication signal that includes at least two portions
`that are modulated according to different schemes, we agree with Petitioner
`that Wu discloses a “wireless communication system that is configured to
`communicate using a mixed waveform configuration” as recited in the
`preamble of independent claim 1. We further agree with Petitioner that Wu,
`thus, discloses “a transmitter configured to transmit according to a mixed
`waveform configuration” and a “receiver configured to acquire and receive
`packets with a mixed waveform configuration.” See id. at 50, 52.
`Petitioner implicitly acknowledges that Wu does not teach that the
`second portion is “modulated according to a multi-carrier scheme,” as
`required by claim 1, because the “service data portion [is] modulated
`according to different types of single-carrier modulation.” Id. at 50 (citing
`Ex. 1108, 413, Figs. 2, 8; Ex. 1120 ¶¶ 43–47). For this limitation, Petitioner
`observes that “Wu mentions 802.11a multi-carrier OFDM as an alternative
`high-rate data modulation scheme.” Id. at 48 (citing Ex. 1108, 411; Ex.
`1120 ¶¶ 43–47, 65–68). Petitioner reasons that a person of ordinary skill in
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`the art “would have appreciated the benefit of including multi-carrier
`modulation in the Wu system” because “Wu itself references the 802.11a
`standard as a multi-carrier OFDM scheme that is able to achieve data rates
`that are faster than the 802.11b transmission rates used in the Wu system.”
`Id. at 48 (citing Ex. 1120 ¶¶ 43–47, 65–68; Ex. 1108, 411). Petitioner
`contends that
`[w]ith this motivation in mind a [person of ordinary skill in the
`art] would have recognized that adding the multi-carrier
`802.11a modulation scheme to the modulation schemes already
`available in the Wu system would have been a simple addition,
`if a technique was available for using a channel estimate
`obtained from data modulated according to a single carrier
`modulation scheme for acquisition of data modulated according
`to a multi-carrier modulation scheme[,]
`
`and supports that contention with testimony by Dr. Almeroth. Id. at 48
`(citing Ex. 1120 ¶¶ 43–47, 65–68). Petitioner identifies such a technique as
`disclosed by Böhnke. Id. at 49.
`Böhnke “relates to the mapping of data and pilot symbols in an
`OFDM-system.” Ex. 1113, col. 1, ll. 4–5. Figure 2 of Böhnke is reproduced
`below.
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`Figure 2 illustrates a sequence that includes a first OFDM modulated signal
`S1, a midamble MA that can be OFDM modulated or single-carrier
`modulated, and a second OFDM symbol S2. Id. at col. 4, ll. 36–41. The
`midamble can be used for the transmission of pilot symbols, which “are
`necessary for a channel estimation such as to effect coherent detection of
`e.g. OFDM-modulated signals,” and such pilot symbols can be created by a
`single carrier modulation with a known training sequence. Id. col. 1, ll. 7–9,
`col. 5, ll. 45–49, col. 5, ll. 61–63. Böhnke, thus, uses the channel estimation
`obtained from the single-carrier training sequence to detect multi-carrier
`OFDM symbols by matching bandwidth and performing synchronization.
`Id. at col. 2, ll. 43–45, col. 2, ll. 61–62. Petitioner reasons that the Böhnke
`channel-estimation techniques “provide a way to combine a high-rate, multi-
`carrier OFDM data transmission scheme with a single carrier training
`sequence” and that
`[w]ith this background, a [person of ordinary skill in the art]
`investigating options for including the multi-carrier 802.11a
`standard in the Wu system would have appreciated that
`Bohnke’s channel estimation techniques could be applied to
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`Wu’s single-carrier 802.11b preamble and used for acquisition
`of data modulated according to multi-carrier 802.11a.
`
`Pet. 49 (citing Ex. 1120 ¶¶ 65–68). We find that Petitioner articulates
`sufficient reasoning with rational underpinnings for making the described
`combination of Wu and Böhnke. See In re Kahn, 441 F.3d 977, 988 (Fed.
`Cir. 2006) (cited with approval in KSR Int’l. Co. v. Teleflex, Inc., 550 U.S.
`398, 418 (2007)).
`In addition to the articulated rationale for combining the references,
`Petitioner sets forth an element-by-element explanation of how it maps the
`combined disclosures of Wu and Böhnke to each of the limitations of claim
`1 at pages 50–51 of the Petition. With that analysis, Petitioner has shown,
`by a preponderance of the evidence, that claim 1 would have been obvious
`over the combination of Wu and Böhnke at the time of the invention.
`Patent Owner responds that Petitioner has conflated “multi-rate” as
`disclosed by Wu with “multi-carrier,” and that the terms are different and
`not related. PO Resp. 15. Patent Owner contends that “‘multirate’ refers to
`a transmission that consists of multiple data rates and is independent of any
`underlying modulation technique,” and that “‘multi-carrier,’ in contrast, is a
`specific type of modulation scheme.” Id. (citing Ex. 2078 ¶¶ 70, 52). Patent
`Owner supports these contentions, as well as its position that “Wu discloses
`only ‘multirate’ and does not disclose ‘multi-carrier’” with testimony by Dr.
`Short. Id. (citing Ex. 2078 ¶ 83).
`Although we do not discount Patent Owner’s contentions, we are not
`persuaded that they are sufficient to rebut Petitioner’s analysis. Petitioner’s
`argument does not rely on a disclosure by Wu of multi-carrier modulation,
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`but instead relies on Böhnke for those limitations that refer to a “multi-
`carrier scheme.” Petitioner’s identification of a “mixed waveform
`configuration” in Wu is consistent with our adopted construction of that
`phrase. We conclude, therefore, that Patent Owner’s attempt to distinguish
`Wu is unavailing.
`Patent Owner also contends that there is “no motivation to combine
`Wu and Böhnke.” Id. at 22–28 (emphasis omitted). Patent Owner’s
`contention that Petitioner relies on conclusory and unfounded statements in
`its analysis overlooks the supporting testimony of Dr. Almeroth provided by
`Petitioner. See id. at 24–26. Nor are we persuaded by Patent Owner’s
`contention that “Petitioner also improperly uses the challenged claims as
`blueprints for why one of ordinary skill in the art would allegedly combine
`Wu and Böhnke.” See id. at 25–28. Likewise, Patent Owner’s complaint
`that “Petitioner fails to identify a single disclosure in any of Wu, Böhnke,
`802.11a, 802.11b, Jamal, or Agee as support for the proposition that one of
`ordinary skill in the art would be motivated to combine 802.11a and 802.11b
`systems” is misplaced. See id. at 27. “The obviousness analysis cannot be
`confined by a formalistic conception of the words teaching, suggestion, and
`motivation, or by overemphasis on the importance of published articles and
`the explicit content of issued patents.” KSR, 550 U.S. at 419. “In
`determining whether the subject matter of a patent claim is obvious, neither
`the particular motivation nor the avowed purpose of the patentee controls.
`What matters is the objective reach of the claim.” Id. We conclude that
`Petitioner has provided sufficient proof of a rationale for combining the
`references. See supra.
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`With respect to the individual limitations of independent claim 1, we
`are not persuaded by Patent Owner’s arguments that “none of the Petition’s
`text, citations to Wu and Böhnke, or reliance on the Almeroth declaration
`discloses a transmitter that transmits multi-carrier modulation” and that “it
`would be impossible for Wu to receive a mixed-waveform signal that
`includes both single-carrier and multi-carrier modulation.” PO Resp. 28, 31.
`Such arguments misstate Petitioner’s position. Petitioner relies on Wu for
`disclosure of “a transmitter configured to transmit according to a mixed
`waveform configuration” (emphasis added) and “a receiver configured to
`acquire and receive packets with a mixed waveform configuration”
`(emphasis added), not for transmission and receipt of multi-carrier
`modulation.
`Patent Owner’s further argument that neither Böhnke nor Wu
`discloses “the waveform being specified so that a channel impulse response
`estimate obtainable from the first portion is reusable for acquisition of the
`second portion” is similarly deficient. See id. at 31–44. That argument
`draws a distinction between Wu’s single-carrier 802.11b preamble and
`Böhnke’s single-carrier midamble. Id. at 43. But as Petitioner observes,
`both of these “are known training sequences that serve a common purpose of
`obtaining estimates of the” channel impulse response. Reply 12–13 (citing
`Ex. 1103 ¶¶ 46, 53, 65, 67; Ex. 1108, 413; Ex. 1113, Abstract). Patent
`Owner’s extensive analysis of Böhnke’s bandwidth-matching technique at
`pages 38–42 of its Response, proffered to rebut the reusability of obtainable
`channel impulse response estimates, is unpersuasive. “The test for
`obviousness is not whether the features of a secondary reference may be
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`bodily incorporated into the structure of the primary reference.” In re
`Keller, 642 F.2d 413, 425 (CCPA 1981). The argument, therefore, fails to
`persuade us.
`For the foregoing reasons, we conclude that Petitioner has shown, by
`a preponderance of the evidence, that independent claim 1 is unpatentable
`under 35 U.S.C. § 103(a) over Wu and Böhnke.
`
`
`D. Obviousness of Dependent Claim 2 over Wu, Böhnke,
`IEEE 802.11a, and IEEE 802.11b
`
`Dependent claim 2 recites that “the transmitter maintains power,
`carrier phase, carrier frequency, timing, and multi-path spectrum between
`the first and second portions of the waveform.”
`As an initial matter, we deny Patent Owner’s request that we
`“disregard everything in the Petition beginning at Section E on page 53.”
`PO Resp. 45. Patent Owner contends that Petitioner’s analysis is
`“perfunctory” and attempts to “skirt the page limit” by extensive reference to
`Dr. Almeroth’s Declaration. Id. As we discuss in greater detail below, we
`determine that Petitioner presents an insufficient analysis with respect to
`some, but not all, of the dependent claims.
`For example, much of Petitioner’s analysis of maintaining the five
`parameters recited in claim 2 was performed earlier in the Petition in
`connection with grounds on which we did not institute trial, namely those
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`involving the combination of Boer2 and Castro3 instead of Wu and Böhnke.
`We agree instead with Petitioner that, “where arguments were based on the
`802.11(a) and 802.11(b) standards and repetitive of previously presented
`arguments” in the same paper, it is permissible to refer to those previously
`presented arguments without repeating them. See Reply 20; see 37 C.F.R.
`§ 42.6(a)(3) (“[a]rguments must not be incorporated by reference from one
`document into another document” (emphasis added)). We further find
`persuasive Petitioner’s contention (supported by expert testimony) that a
`person of ordinary skill in the art would combine the teachings of Wu,
`Böhnke, IEEE 802.11a, and IEEE 802.11b “because Wu explicitly utilizes
`the 802.11b standard for transmitting its preamble and header, and
`contemplates the 802.11a standard as an option for high-data rate
`transmission over wireless local area networks.” Pet. 53 (citing Ex. 1120
`¶¶ 65–68).
`We are not persuaded by Patent Owner’s additional arguments. With
`respect to “power,” Petitioner observes that IEEE 802.11a “teaches that the
`average power for the header (in the first portion) should be the same as the
`average power for the data (second portion).” Id. at 53, 22 (citing Ex. 1107,
`19, § 17.3.5.7, ¶ 2; Ex. 1120 ¶ 76). IEEE 802.11a teaches that, although
`different modulation types can be used in the SIGNAL field (part of the
`header in the first portion) and the DATA field (the second portion), a
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`2 Jan Boer, “OFDM in the 2.4 GHz Band,” IEEE HRb Study Group, doc. no.
`IEEE 802.11-00/188 (IEEE 2000) (Ex. 1110).
`3 Jonathan P. Castro et al., “Downlink OFDM Techniques in 3rd Generation
`TDMA Based Mobile Systems” (IEEE 1998) (Ex. 1105).
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`“normalization factor” should be used “to achieve the same average power
`for all mappings” as the signal changes from SIGNAL to DATA, i.e.,
`between the first and second portions of the waveform. See Ex. 1107, 19,
`§ 17.3.5.7, ¶ 2; Ex. 1120 ¶ 76. Continuity is, thus, required between the first
`and second portions of a waveform, consistent with our adopted construction
`of “maintains.”
`With respect to “carrier phase,” Petitioner observes that IEEE 802.11b
`uses the same symbol in a packet header (first portion) as in the data payload
`(second portion) and teaches “rotating the whole symbol by the appropriate
`amount relative to the phase of the preceding symbol.” Pet. 51, 23 (quoting
`Ex. 1106, 48, ¶ 3). Similarly, IEEE 802.11a teaches rotating the phase of
`subcarriers in OFDM data (second portion) based on an estimate of the
`phase of subcarriers in a pilot sequence (first portion). Id. at 23 (citing Ex.
`1107, 30, ¶ 2). Petitioner supports its contention that these teachings require
`“maintaining” the carrier phase between the first and second portions of the
`waveform with testimony by Dr. Almeroth. Id. at 23 (citing Ex. 1120 ¶¶ 79–
`80).
`
`With respect to “carrier frequency,” Petitioner observes that, in Wu,
`both the preamble and header (first portion) and the data payload (second
`portion) of a frame are transmitted at the same carrier frequency of 2.4 GHz.
`Id. at 53–54 (citing Ex. 1108, 412). Petitioner’s contention that Wu, thus,
`discloses that “its transmitter maintains carrier frequency between first and
`second portions of its frame” is supported with testimony by Dr. Almeroth.
`Id. at 54 (citing Ex. 1120 ¶ 80).
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`With respect to “timing,” Petitioner observes that IEEE 802.11a
`teaches an overlap between the last sample of the training sequence (first
`portion) and the following OFDM symbol (second portion). Id. at 54, 24
`(citing Ex. 1107, 57; Ex. 1120 ¶ 81–83). Similarly, IEEE 802.11b teaches a
`group of chips that define symbols in both the preamble and data, with the
`first chip “aligned at the start of a transmitted symbol.” Id. (citing Ex. 1106,
`45, ¶ 1; Ex. 1120 ¶¶ 81–83). Petitioner’s contention that both IEEE 802.11a
`and IEEE 802.11b, thus, teach “maintaining” timing is supported by
`testimony by Dr. Almeroth. Id. (citing Ex. 1120 ¶¶ 81–83). Petitioner
`further observes that Böhnke discloses that two OFDM symbols (second
`portion), together with a midamble (first portion), are adjacent and aligned to
`fit exactly into one timeslot. Id. at 54 (citing Ex. 1113, col. 2, ll. 59–60, col.
`5, ll. 38–44, Fig. 4; Ex. 1120 ¶¶ 52–53, 65–68). Petitioner’s contention that
`Böhnke, thus, discloses “maintaining” timing is also supported by testimony
`by Dr. Almeroth. Id. (citing Ex. 1120 ¶¶ 52–53, 65–68).
`With respect to “multi-path spectrum,” Petitioner observes that IEEE
`802.11b specifies a transmit spectrum mask as shown in Figure 19, and
`IEEE 802.11a specifies a transmit spectrum mask as shown in Figure 120.
`Id. 54, 24–25 (citing Ex. 1106, 66; Ex. 1120 ¶¶ 85–87). Petitioner reasons
`that a person of ordinary skill in the art “would have understood that using
`the same time-domain windowing function to transmit symbols would yield
`the same frequency-domain spectrum for those symbols,” maintaining multi-
`path spectrum because the transmission spectrum would have been affected
`in the same way by multi-path fading. Id. at 26 (citing Ex. 1120 ¶ 87).
`Petitioner additionally contends that Böhnke discloses that if single-carrier
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`modulation is used for the midamble training sequence, then the bandwidth
`of the training sequence (first portion) must match the bandwidth of the data
`OFDM symbols (second portion). Id. at 54 (citing Ex. 1113, col. 6, ll. 10–
`13; Ex. 1120 ¶¶ 52–53, 65–68).
`Patent Owner responds that Petitioner’s analysis ignores express
`limitations of claim 1 in its analysis of claim 2, namely that the “first
`portion” must be “modulated according to a single-carrier scheme with a
`preamble and header” and the “second portion” must be “modulated
`according to a multi-carrier scheme.” PO Resp. 50. We are not persuaded
`by this contention. Patent Owner argues that “Petitioner’s reliance on
`[IEEE] 802.11a and [IEEE] 802.11b is misplaced because neither reference
`discloses a mixed waveform configuration.” Id. at 51. Such an argument
`attacks the references individually when Petitioner has relied on a
`combination of references. See Keller, 642 F.2d at 425 (test for obviousness
`is what the combined teachings of the prior art would have suggested to the
`hypothetical person of ordinary skill).
`Our consideration of these issues is also informed by the testimony of
`both parties’ witnesses. As noted above, Petitioner cites to the testimony of
`Dr. Almeroth in support of its position for each of the five parameters
`required by claim 2 to be maintained between first and second portions of
`the waveform. Petitioner also notes that Patent Owner’s witness, Dr. Short,
`testifies that in the general context of coherent digital communications and
`wireless networks,
`[t]he use of coherent digital modulation, whether si
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