throbber

`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________
`
`
`ERICSSON INC., TELEFONAKTIEBOLAGET
`LM ERICSSON, AND AT&T MOBILITY, LLC,
`Petitioners,
`
`v.
`
`INTELLECTUAL VENTURES I LLC,
`Patent Owner
`
`_____________________
`
`
`Case IPR2016-01169
`Case IPR2017-00681
`Patent 5,960,032
`
`_____________________
`
`
`PETITIONERS’ REPLY TO PATENT OWNER’S RESPONSE
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`
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`
`
`
`
`

`

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`
`Petitioners’ Reply
`IPR2016-01169 (Patent No. 5,960,032)
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`TABLE OF CONTENTS
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`Introduction ...................................................................................................... 1 
`
`The combination teaches claim 1 under any of the constructions
`put forward in this proceeding. ........................................................................ 2 
`
`
`
`I. 
`
`II. 
`
`III.  A POSITA would have been motivated to combine Sasaki 1994
`and Sasaki 1991. .............................................................................................. 6 
`
`A. 
`
`B. 
`
`C. 
`
`D. 
`
`Sasaki 1994 and Sasaki 1991 describe modes of
`operation of the same system. ............................................................... 6 
`
`A POSITA would have understood the combinations
`available in Sasaki 1994, in view of Sasaki 1991, to
`include r=M. .......................................................................................... 8 
`
`Sasaki 1991 explicitly suggests r=M for the same system
`in Sasaki 1994. .................................................................................... 12 
`
`The Petition demonstrated a motivation to combine
`Sasaki 1991 with Sasaki 1994. ............................................................ 14 
`
`IV.  The combination of Sasaki 1994 and Sasaki 1991 teaches
`independent claim 1 as a whole. .................................................................... 16 
`
`V. 
`
`The dependent claims are obvious as shown in the Petition. ........................ 19 
`
`A.  A POSITA would have understood Sasaki 1994 to teach
`mutually orthogonal sequences and PN sequences. ............................ 19 
`
`B. 
`
`Fattouche’s pilot symbols were well-known and
`applicable in various user contexts. .................................................... 23 
`
`VI.  Conclusion ..................................................................................................... 26 
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`VII.  Certificate of Word Count ............................................................................. 27 
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`ii
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`Cases 
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`Petitioners’ Reply
`IPR2016-01169 (Patent No. 5,960,032)
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`TABLE OF AUTHORITIES
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`
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`Allied Erecting and Dismantling Co., Inc. v. Genesis Attachments, LLC, 825 F.3d
`
`1373 (Fed. Cir. 2016) .................................................................................... 19, 24
`
`Grain Processing Corp. v. Am. Maize-Products Co., 840 F.2d 902 (Fed. Cir.
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`1988). ................................................................................................................... 18
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`In re Applied Materials, Inc., 692 F.3d 1289 (Fed. Cir. 2012). .............................. 12
`
`In re Keller, 642 F.2d 413 (CCPA 1981) ................................................................ 19
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`In re Mouttet, 686 F.3d 1322 (Fed. Cir. 2012) ........................................................ 12
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`In re Nuvasive, 842 F.3d 1376 (Fed. Cir. 2016). ..................................................... 14
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`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) ................................................ 12
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`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795 (Fed. Cir. 1999). ........... 5
`
`
`
`
`
`iii
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`Introduction
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`
`
`I.
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`Petitioners’ Reply
`IPR2016-01169 (Patent No. 5,960,032)
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`The Petition and the record as a whole provide detailed reasons why a
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`person of skill in the art (“POSITA”) would have understood Sasaki 1994 and
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`Sasaki 1991 (in addition to other cited art) to render obvious each and every
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`element of the challenged claims.
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`Patent Owner (“PO”) presents three primary arguments: (1) Petitioners did
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`not show Sasaki 1994 has a “sequence period”; (2) a POSITA would not have been
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`motivated to utilize an operating mode of Sasaki 1991 in Sasaki 1994; and (3) with
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`respect to certain dependent claims, orthogonal sequences/PN sequences have not
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`been shown and a POSITA would not combine Fattouche with Sasaki 1994. All of
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`these arguments fail.
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`First, both parties appear to agree that the combination of Sasaki 1994 and
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`Sasaki 1991 teaches a “sequence period” according to the broader construction
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`advocated by PO and adopted by the Board. Even under the narrower construction
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`utilized in the Petition, a POSITA was well aware that holding kTd constant was a
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`known relationship.
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`Second, in an effort to avoid a motivation to combine, PO attempts to force a
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`non-existent distinction between Sasaki 1994 and Sasaki 1991. Both Sasaki 1991
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`and Sasaki 1994 utilize the same system model, with each describing different
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`aspects of operation depending upon the mode of operation and the environment
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`1
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`

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`Petitioners’ Reply
`IPR2016-01169 (Patent No. 5,960,032)
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`under consideration. The selected number of sequences “r” (out of M available)
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`corresponds to a mode of operation for the system, not a modification into a
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`different system. This is consistent with the claims under review as they are
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`addressed to a method of operation, not a structural system.
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`The third argument is based on a flawed understanding of Sasaki 1994’s use
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`of “orthogonal PN sequences” and ignores Sasaki 1994’s additional teachings of
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`using both orthogonal and PN sequences. Although PO’s expert was unfamiliar
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`with the term and unable to locate any literature discussing “orthogonal PN
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`sequences,” Petitioner’s expert, Dr. Haas, was able to locate publications
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`discussing “orthogonal PN sequences,” demonstrating that the term was known to
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`a POSITA. Further, PO’s argument against the Fattouche combination does not
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`take into account a POSITA’s ordinary creativity.
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`For the reasons shown in the Petition and further described below, all of
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`PO’s arguments fail, and the challenged claims of the ’032 patent are unpatentable.
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`II. The combination teaches claim 1 under any of the constructions put
`forward in this proceeding.
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`PO argues that the terms “sequence period” and “chip duration” require no
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`further construction beyond plain and ordinary meaning. PO Response, Paper No.
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`21 (“Response”), p.4-7. Whether under Petitioners’ narrower constructions detailed
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`in the Petition or the broader plain and ordinary meaning, Petitioners have shown
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`2
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`

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`Petitioners’ Reply
`IPR2016-01169 (Patent No. 5,960,032)
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`that the art renders obvious claims 1-9 of the ’032 Patent.
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`“sequence period”
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`PO’s initial argument that the Petition failed to show the construed term
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`because “kTd=NTc could be preserved any number of ways besides holding kTd
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`constant” misses the point. See Response, pp.10-11. Whether or not there are other
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`ways to preserve the relationship, the fact remains that it was known to a POSITA
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`to hold kTd constant. Even Dr. Cimini agreed:
`
`Q. Okay. So one of Ordinary Skill in the Art looking at Sasaki 1994
`could, if they wanted to, hold kTd fixed when choosing N, correct?
`…
`A. Yes, there is no restrictions stated about T being fixed or not.
`…
`Q. And as a result, one of Ordinary Skill in the Art could adjust
`variables such that kTd is fixed when choosing N, that’s a possibility,
`right?
`…
`A. It’s a possibility for that equation, yes.
`
`ERIC-1020, 144:3-20.
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`In the end, PO does not argue that Sasaki 1994 lacks a teaching of kTd being
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`fixed. PO cannot do so because, as Dr. Cimini acknowledged, it was a known
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`possibility. Indeed, as Dr. Haas explains, it was a relationship that a POSITA
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`would have implemented with certain fixed inputs such as Td (i.e., an input to the
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`3
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`Petitioners’ Reply
`IPR2016-01169 (Patent No. 5,960,032)
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`system not available for change by the designer) and k (determined by the
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`
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`relationship when r=M, motivated by advantageous operational results in that
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`mode). ERIC-1019, ¶¶2-8 (see also Petition pp.46-47 and ERIC-1012, pp.64-65.).
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`The Petition therefore demonstrated that Sasaki 1994 has a “sequence period”
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`under the proposed construction.
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`The Petition provided evidence that Sasaki 1994 also teaches a “sequence
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`period” under the plain and ordinary meaning advocated by PO and adopted by the
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`Board at Institution. Specifically, Petitioners showed that each sequence in Sasaki
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`1994 has a length N and “N times the chip duration Tc corresponds to the total
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`duration of the modulating sequence (the sequence period).” Petition, p.46 (citing
`
`ERIC-1012, p. 64); ERIC-1019, ¶9.
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`Moreover, both parties appear to agree that under the plain and ordinary
`
`meaning, Sasaki 1994 discloses a “sequence period.” Dr. Cimini agreed during
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`deposition that a “sequence period determined by a total number of chips
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`multiplied by a Chip Duration … [is] the usual definition.” See ERIC-1020, 136:9-
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`13. Dr. Cimini further acknowledged that “a POSITA reviewing Sasaki 1994
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`would understand that N times Tc is sequence period.” Id., 137:17-138:2.
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`Accordingly, even under PO’s plain and ordinary meaning, the Petition
`
`established that Sasaki 1994’s chip duration Tc multiplied by the length N is the
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`“sequence period,” and both parties agree that Sasaki 1994 has a “sequence
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`4
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`

`

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`
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`period.”
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`Petitioners’ Reply
`IPR2016-01169 (Patent No. 5,960,032)
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`Thus, Petitioners have shown that “sequence period” is disclosed in Sasaki
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`1994 under either construction. In order to narrow the issues for determination by
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`the Board, Petitioners are willing to accept the plain and ordinary meaning for
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`“sequence period,” which as shown above and acknowledged by PO’s expert, is
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`taught in the art. Id.
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`“chip duration”
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`PO does not put forward an alternative construction beyond arguing that
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`“‘chip duration’ equals KTb/N,” nor does PO argue that Sasaki 1994 fails to satisfy
`
`the limitation under either construction. See Response, p.5. Petitioners already
`
`demonstrated that Sasaki 1994 taught “chip duration” with “Tc” in a manner
`
`meeting both Petitioners’ construction and PO’s broader alternative. See Petition,
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`p.48. Moreover, Dr. Cimini agreed that Sasaki 1994 taught a “chip duration”
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`represented by “Tc.” ERIC-1020, 126:24-127:2; see also ERIC-1022.
`
`Since PO does not argue that Sasaki 1994 fails to disclose the claimed “chip
`
`duration” under either construction, construction of this term is not necessary to
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`resolve the controversy in this proceeding. Vivid Techs., Inc. v. Am. Sci. & Eng’g,
`
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
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`5
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`Petitioners’ Reply
`IPR2016-01169 (Patent No. 5,960,032)
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`III. A POSITA would have been motivated to combine Sasaki 1994 and
`Sasaki 1991.
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`
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`Claim 1 of the ‘032 patent recites “a method for transmitting digital data in a
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`wireless communication environment.” There is no requirement for use of a
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`specific system to accomplish the claimed method; the claim is simply directed to
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`the performance of certain steps. See ERIC-1020, 179:14-24.
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`PO attacks the combination of Sasaki 1994 and Sasaki 1991 because a
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`POSITA would allegedly not modify Sasaki 1994’s PC/SS system according to
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`Sasaki 1991’s “special case” where the variables are set to r=M. Response, p.13.
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`PO’s assertion is based on the assumption that Sasaki 1991 “forbids r from being
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`equal to M in PC/SS systems.” Id., p.15. PO further claims that Sasaki 1991’s r=M
`
`would allegedly destroy Sasaki 1994’s principle of operation. Id., pp.17-18.
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`PO’s argument mischaracterizes Sasaki 1994 and Sasaki 1991 and ignores
`
`what a POSITA would have appreciated from both disclosures.
`
`A.
`
`Sasaki 1994 and Sasaki 1991 describe modes of operation of the
`same system.
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`According to PO, when Sasaki 1991’s system is operated with r=M, the
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`system is no longer a PC/SS system. See Response, pp.15-16. PO thereby creates a
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`non-existent distinction between Sasaki 1994 and Sasaki 1991.
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`Both Sasaki 1994 and Sasaki 1991 describe the same PC/SS system. See
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`ERIC-1019, ¶¶10-11. Consistent with Dr. Haas, Dr. Cimini assumes that the PC/SS
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`6
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`Petitioners’ Reply
`IPR2016-01169 (Patent No. 5,960,032)
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`systems of Sasaki 1994 and Sasaki 1991 are the same. ERIC-1020, 173:9-12.
`
`
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`
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`Moreover, the value of r with respect to M, whether equaling 1, less than M, or M,
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`defines different modes of operation of the PC/SS system and does not suddenly
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`change the PC/SS system into a different system as PO alleges. ERIC-1019, ¶14.
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`The parties’ agreement that Sasaki 1994 and Sasaki 1991 disclose the same
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`PC/SS system makes sense based on the express disclosure of the references.
`
`Sasaki 1991 analyzes the PC/SS system “in additive white gaussian noise (AWGN)
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`environment.” ERIC-1003, p. 1, right col., ¶ 2. Sasaki 1994 further analyzes the
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`same PC/SS system in a Rayleigh fading channel. ERIC-1002, p. 1, left col., ¶ 5,
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`right col., ¶¶ 1, 3; see also ERIC-1019, ¶¶12-13.
`
`Given this fact, PO resorts to misrepresenting Sasaki 1991 to argue that
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`“Sasaki 1991 expressly states that a ‘simple SS parallel transmission system (i.e.
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`code division multiplexing by one user),’ and not a parallel combinatory (PC) SS
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`system, results from the case where r=M.” Response, p.15. But, to the contrary,
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`Sasaki 1991 does not state that the “simple SS parallel transmission system” is not
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`a PC/SS system.
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`Instead, Sasaki 1991 teaches that setting r=M is a special operating case of
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`the PC/SS system: “[i]n the special case, when r=1, this system is the same as the
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`M-ary SS system [2] with multiplying factor +1 or -1, and r=M, it is simple SS
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`parallel transmission system.” ERIC-1003, p. 2, left col., ¶ 1 (emphasis added). A
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`7
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`Petitioners’ Reply
`IPR2016-01169 (Patent No. 5,960,032)
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`POSITA would have understood “this system” to be the PC/SS system with r=1,
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`
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`and “it” to be “this system” (the PC/SS system) with r=M. ERIC-1019, ¶¶14-15.
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`When r=M, a POSITA would have understood the result of the PC/SS system’s
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`operation to be “the same as” a “simple SS parallel transmission system,” not be a
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`wholly different system. Id.
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`There is nothing in Sasaki 1991 or Sasaki 1994 that “forbids” r from
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`equaling M in PC/SS systems. Instead, a POSITA would have recognized from
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`Sasaki 1994 and Sasaki 1991 that setting r=M is a particular mode of operation of
`
`the PC/SS system, whether or not r<M is a typical use case. See ERIC-1019, ¶16.
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`A POSITA would not be discouraged from setting r=M in Sasaki 1994’s
`
`system, at the least because Sasaki 1991 expressly identifies r=M as a valid mode
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`of operation for the system. Id., ¶¶14-16, 35. Moreover, a POSITA would have
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`had a reasonable expectation of success since both references discuss the same
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`system, with no physical modification required. Id., ¶¶16-17.
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`B. A POSITA would have understood the combinations available in
`Sasaki 1994, in view of Sasaki 1991, to include r=M.
`
`The operation of the PC/SS system with r=M further illuminates PO’s non-
`
`existent distinction. A POSITA reading Sasaki 1994 would have understood that
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`choosing r from M includes choosing all M sequences as a valid combinatory
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`option, and that the PC/SS system would not only still operate, but do so as a
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`8
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`Petitioners’ Reply
`IPR2016-01169 (Patent No. 5,960,032)
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`PC/SS system by virtue of the choosing. ERIC-1019, ¶21.
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`
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`In combinatorics, a POSITA knew that the possible subsets of a set of
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`objects include the subset with all of the objects selected. Id., ¶¶18-20. Using the
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`group A, B, C as an example set, Dr. Cimini agreed that valid subsets include “AB,
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`AC, and … BC and … then you have ABC.” ERIC-1020, 86:5-18 (emphasis
`
`added). Dr. Cimini confirmed this:
`
`Q. … So ABC is a set of the group ABC?
`A. Mathematically, yeah. Yes.
`
`ERIC-1020, 86:19-22.
`
`Further, Dr. Cimini acknowledged that both Sasaki 1991 and Sasaki 1994
`
`teach choosing r sequences from M available sequences. Id., 145:9-147:11. Thus,
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`Dr. Cimini understood that the act of choosing in combinatorics includes the full
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`set of possible choices, as well as that both Sasaki references teach choosing r
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`sequences from M available sequences.
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`Despite the literal language of Sasaki 1991, PO attempts to force a limit that
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`r must be less than M in all cases. See Response, p.15. In contrast, a POSITA
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`would have understood that choosing a subset of r sequences out of a set of M
`
`available sequences in Sasaki 1991 and Sasaki 1994 would include the full set
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`(r=M) as an option. ERIC-1019, ¶21. PO cannot avoid the passage in Sasaki 1991
`
`that teaches to a POSITA that r=M is a mode of operation of the PC/SS system.
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`9
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`

`Petitioners’ Reply
`IPR2016-01169 (Patent No. 5,960,032)
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`Nor can PO avoid the mathematical fact that choosing a subset (r sequences) can
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`include choosing all of the objects of the set (M sequences).
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`PO argues that setting r=M “render[s] redundant the very components,
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`including the constant weight coder, that make it combinatory” since Dr. Haas, in
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`his deposition, noted that the constant weight coder becomes optional when r=M.
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`Response, pp.17-18. Dr. Cimini further elaborated on PO’s tangent, testifying that
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`Sasaki 1991’s diagram would “reduce[] to something that’s simpler which he
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`actually calls a parallel spread-spectrum transmission system.” ERIC-1020,
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`152:22-153:2; see also 159:19-24.
`
`But just because a component becomes optional or unnecessary, and a
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`simpler configuration is possible, does not mean that the system cannot work with
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`that component still there or that the component must be removed. To the contrary,
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`a POSITA would have appreciated that the PC/SS system with r=M would still
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`operate with the constant weight coder. Sasaki 1991’s “(M,r) constant weight
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`coder” would operate as an (M,M) constant weight coder, outputting all M
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`sequences. ERIC-1019, ¶¶22-27. Choosing all of the available objects (such as M
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`sequences) is still a combinatory choice, as Dr. Cimini admitted in his deposition.
`
`See ERIC-1020, 86:5-22.
`
`PO’s additional argument that the proposed combination would “destroy the
`
`principle of operation” of Sasaki 1994 has no merit. PO errs in narrowly arguing
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`10
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`

`

`Petitioners’ Reply
`IPR2016-01169 (Patent No. 5,960,032)
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`that the PC/SS principle of operation requires selecting r<M sequences. The
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`
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`operation in Sasaki 1994 instead involves selecting r sequences from among M
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`available sequences, with the possible selection (as explicitly indicated by Sasaki
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`1991) ranging from r=1 up to r=M for different modes of operation. ERIC-1019,
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`¶¶28-29.
`
`Further, PO argues that setting r to equal M is a “modification” that
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`“transforms” Sasaki 1991’s system into something other than a PC/SS system. See
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`Response, p.18. There is no “modification” when setting r to a particular value,
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`whether that be r=1, r<M, or r=M, since they are all modes of operation for the
`
`same system. See ERIC-1019, ¶30.
`
`Sasaki 1991 and Sasaki 1994’s discussion of performance results where r<M
`
`does not preclude a POSITA from utilizing Sasaki 1991’s teaching that r=M is a
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`further choice for operation of Sasaki 1994. Indeed, Dr. Cimini acknowledged that
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`Sasaki 1994 has no restriction that r must be less than M; rather, he selectively
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`imports this restriction from a single statement in Sasaki 1991 which, as noted
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`above, is an example (not a limitation). See ERIC-1020, 168:4-14.
`
`Even if r<M was allegedly more interesting to the Sasaki 1994 and Sasaki
`
`1991 authors, it does not mitigate the fact that, as Dr. Cimini acknowledged,
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`Sasaki’s system with r=M is a “known system.” ERIC-1020, 157:7-15. “A
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`reference must be considered for everything that it teaches, not simply the
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`11
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`Petitioners’ Reply
`IPR2016-01169 (Patent No. 5,960,032)
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`described invention or a preferred embodiment.” In re Applied Materials, Inc., 692
`
`
`
`
`
`
`
`F.3d 1289, 1298 (Fed. Cir. 2012). Indeed, “[o]ne of ordinary skill in the art is not
`
`an ‘automaton’” and understands how to utilize the full teaching and disclosure of
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`a reference. Id. (quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)).
`
`Still further, as the Federal Circuit has explained, “just because better
`
`alternatives exist in the prior art does not mean that an inferior combination is inapt
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`for obviousness purposes.” See In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir.
`
`2012).
`
`PO’s arguments that when r=M the system is no longer a PC/SS system is
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`nothing more than a distraction. Operation of the system of Sasaki 1994, as
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`modified by the express teachings of Sasaki 1991, teaches all of the elements
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`recited in independent claim 1.
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`C.
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`Sasaki 1991 explicitly suggests r=M for the same system in Sasaki
`1994.
`
`A POSITA would have been motivated to combine the r=M teaching of
`
`Sasaki 1991 with the teachings of Sasaki 1994 because Sasaki 1991 explicitly
`
`suggests the combination. Sasaki 1994 and Sasaki 1991 describe the same PC/SS
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`system, and Sasaki 1991 expressly teaches r=M as a mode of operation for the
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`PC/SS system.
`
`As an initial matter, Sasaki 1994 expressly refers to Sasaki 1991’s analysis
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`12
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`Petitioners’ Reply
`IPR2016-01169 (Patent No. 5,960,032)
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`of the PC/SS system in another environment. ERIC-1019, ¶32. According to
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`Sasaki 1994, “[t]he symbol error rate (SER) of the PC/SS system with complete
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`coherent detection in an AWGN channel is described in [Sasaki 1991].” ERIC-
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`1002, p.3.
`
`A POSITA would have turned to Sasaki 1991 to become familiar with the
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`material in Sasaki 1991 as part of understanding the Rayleigh fading channel
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`analysis of Sasaki 1994. ERIC-1019, ¶¶31-33. Dr. Cimini agreed that a POSITA
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`would have been motivated to turn to a cited reference in such a situation as this:
`
`Q. Okay. So a citation in one of your technical papers is to direct a
`reader to additional information if they feel that they need it?
`A. Right. If they want to go find more information that I haven’t
`provided, then, yes.
`ERIC-1020, 82:25-83:10, 84:20-85:2 (emphasis added). Dr. Cimini describes the
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`very situation of Sasaki 1994’s SER discussion – Sasaki 1994 did not provide SER
`
`in an AWGN channel, referring a POSITA instead to the earlier PC/SS system
`
`analysis in Sasaki 1991. See ERIC-1019, ¶33. Thus, a POSITA reading Sasaki
`
`1994 would have been motivated to turn to Sasaki 1991.
`
`Sasaki 1991 teaches more detail regarding the modes of operation of the
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`same PC/SS system taught in Sasaki 1994, with r=M being an explicit teaching and
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`suggestion to a POSITA to set the mode of operation in Sasaki 1994 to r=M. Id.,
`
`¶¶34-35.
`
`13
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`

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`Petitioners’ Reply
`IPR2016-01169 (Patent No. 5,960,032)
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`PO cites In re Nuvasive for the proposition that “the fact that a secondary
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`
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`reference may ‘provide “additional information” is insufficient to establish a
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`motivation
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`to combine’.” Response, p.20. But PO
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`takes
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`the “additional
`
`information” from Nuvasive out of context. In Nuvasive, Petitioner’s expert had
`
`discussed placing markers to “provide additional information regarding the
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`orientation or location of an implant.” In re Nuvasive, 842 F.3d 1376, 1382-84
`
`(Fed. Cir. 2016). The “additional information” was thus information from
`
`radiopaque markers, not from reading of the secondary reference itself as a whole.
`
`A POSITA reading Sasaki 1994 would have been motivated to look to
`
`Sasaki 1991 for additional analysis and understanding of Sasaki 1994. Once
`
`reading Sasaki 1991, a POSITA would have had a reason to combine the
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`references because Sasaki 1991 provides an explicit teaching and suggestion to
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`make the combination of r=M from Sasaki 1991 with Sasaki 1994 as a mode of
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`operation of the PC/SS system of both references.
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`D. The Petition demonstrated a motivation to combine Sasaki 1991
`with Sasaki 1994.
`
`PO argues that a POSITA would not have modified Sasaki 1994 to operate
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`according to a “special case” because the system would no longer be a PC/SS
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`system. However, as noted above, PO attempts to create a non-existent distinction
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`between operating the same system with variables r<M and r=M. None of the
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`Petitioners’ Reply
`IPR2016-01169 (Patent No. 5,960,032)
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`arguments overcome the multiple reasons identified in the Petition for the
`
`
`
`
`
`
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`combination of Sasaki 1994 and Sasaki 1991.
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`As stated in the Petition, a POSITA studying Sasaki 1994 would have been
`
`motivated to look to Sasaki 1991’s example model of the PC/SS system when
`
`implementing the functions taught in Sasaki 1994, and to better understand the
`
`performance of the same system in the AWGN environment. Petition, p.23; see
`
`also ERIC-1012, ¶¶85-86.
`
`Further, the Petition established that a POSITA would have appreciated r
`
`and M to be variables that may assume a range of values (as Dr. Cimini also
`
`testified to: “it can take one value, infinite number of values … it can change over
`
`time,” ERIC-1020, 85:6-16). Petition, p.24. The Petition also established that r can
`
`equal M in Sasaki 1994 because r is chosen from M. Id., p.22. Dr. Cimini
`
`acknowledged that a valid combination from a set constitutes all the objects of that
`
`set (i.e., ABC from the set A, B, C), and further conceded that Sasaki 1994 does
`
`not place any restriction on r’s relationship to M. ERIC-1020, 86:5-22, 166:4-14.
`
`The Petition further established that a POSITA would turn to Sasaki 1991,
`
`not to modify Sasaki 1994 into a different system as PO alleges (Response, p.13),
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`but to “confirm that selecting the variable ‘r’ to equal the variable ‘M’” is a valid
`
`option at which to set the mode of operation for the system in Sasaki 1994.
`
`Petition, p.24. The combination of Sasaki 1994 and Sasaki 1991 would produce the
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`15
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`Petitioners’ Reply
`IPR2016-01169 (Patent No. 5,960,032)
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`“known, predictable result of … selecting a range of values for r, including where r
`
`
`
`
`
`
`
`equals M, from the M available orthogonal PN sequences.” Id. Still a further
`
`reason to make the combination is that Sasaki 1991 expressly teaches that the
`
`variable r can equal M in an operating mode of the PC/SS system. ERIC-1003, p.
`
`2, left col., ¶ 1; ERIC-1012, ¶83.
`
`PO does not address these facts from the Petition – instead, PO relies on a
`
`non-existent distinction between operation of the PC/SS system with variables r<M
`
`and r=M, which as shown above are not different systems but simply modes of
`
`operation for the same PC/SS system. Thus, the Petition already established a
`
`motivation to combine Sasaki 1991 with Sasaki 1994.
`
`IV. The combination of Sasaki 1994 and Sasaki 1991 teaches independent
`claim 1 as a whole.
`
`PO further obfuscates the issues with an assertion that Petitioners did not
`
`“establish that a single, modified system teaches or suggests each and every feature
`
`recited in independent claim 1.” Response, p.24. It is undisputed that Sasaki 1994
`
`teaches N>k. See, e.g., id., p.27. The Petition throughout demonstrated that the
`
`PC/SS system common to both Sasaki 1994 and Sasaki 1991, in the operation
`
`mode r=M, teaches all of the limitations of independent claim 1 as a whole. See
`
`Petition, pp.22-24, 33-53.
`
`Moreover, Dr. Haas explained that a POSITA would have been motivated to
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`

`Petitioners’ Reply
`IPR2016-01169 (Patent No. 5,960,032)
`
`
`maintain N>k when r=M, in order to obtain a spreading factor greater than one for
`
`
`
`
`
`
`
`the PC/SS system in Sasaki 1994. ERIC-1012, pp. 66-67. Sasaki 1994’s teachings
`
`regarding N>k do not change when the PC/SS system’s mode of operation is set to
`
`r=M. ERIC-1019, ¶¶37-38. Dr. Haas further explains, by looking just at the
`
`examples that Sasaki 1994 gave for N, k, r, and M, that a POSITA would have
`
`appreciated that N would have been greater than k with r=M. Id., ¶¶36-43.
`
`For example, with Sasaki 1994’s figure 1, setting r=M for the value of 12
`
`(an example given for r and M) would still result in an operable system for the
`
`values of k (=r=M) and 84 for N, and a system that is parallel combinatory (with
`
`the full set as the combination). Id., ¶¶38-39. Moreover, a POSITA would have
`
`been motivated in general to maintain N>k for any setting of r with respect to M, in
`
`order to facilitate the spreading factor (defined by N/k in Sasaki 1994) remaining
`
`large for good system performance (e.g., keeping the signal-to-noise ratio large).
`
`Id., ¶¶43-44.
`
`PO does not provide any evidence that disputes what Petitioners have
`
`demonstrated with respect to maintaining the spreading factor N/k greater than one
`
`(and, thus, N>k) with the r=M mode of operation. PO apparently did not even look
`
`at what would happen when r=M for N and k, per Dr. Cimini:
`
`Q. Could one of … Ordinary Skill in the Art set r to equal M while at
`the same time keeping [N] greater than K?
`
`17
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`

`
`
`
`
`
`
`Petitioners’ Reply
`IPR2016-01169 (Patent No. 5,960,032)
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`
`
`
`…
`A. I don’t know because I actually haven’t plugged in the numbers …
`I guess I – I never put r=M in anything. So I didn’t look at that.
`…
`Q. So as you sit here today, you have no opinion on whether Sasaki
`1991 or Sasaki 1994 prohibits N being greater than K when r=M?
`…
`A. I didn’t – yeah, I didn’t look at that.
`ERIC-1020, 182:5-22; 183:13-20 (emphasis added).
`
`Still further, PO’s conclusion, that “Petitioners fail to demonstrate that the
`
`combination of Sasaki 1994 and Sasaki 1991 teaches or suggests a single system
`
`having each of the recited features of claim 1,” is not what the law requires. See
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`Response, p.24 (emphasis added). The very case that PO cites in support of its
`
`conclusion demonstrates the misunderstanding. “In determining obviousness, ‘the
`
`inquiry is not whether each element existed in the prior art, but whether the prior
`
`art made obvious the invention as a whole for which patentability is claimed.’”
`
`Grain Processing Corp. v. Am. Maize-Products Co., 840 F.2d 902, 907-08 (Fed.
`
`Cir. 1988).
`
`The requirement is not to show that the prior art teaches “a single system”
`
`with each of the limitations of the claim; it is to show that the prior art teaches to a
`
`POSITA the invention as a whole. It is not “whether the features of a secondary
`
`reference may be bodily incorporated into the structure of the primary reference,”
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`Petitioners’ Reply
`IPR2016-01169 (Patent No. 5,960,032)
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`but rather whether “a skilled artisan would have been motivated to combine the
`
`
`
`
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`
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`teachings of the prior art references to achieve the claimed invention.” Allied
`
`Erecting and Dismantling Co., Inc. v. Genesis Attachments, LLC, 825 F.3d 1373,
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`1381 (Fed. Cir. 2016) (quoting In re Keller, 642 F.2d 413, 425 (CCPA 1981)).
`
`Petitioners have shown, both in the Petition and in this Reply, that the teachings of
`
`Sasaki 1994 and Sasaki 1991 in combination “[make] obvious the invention as a
`
`whole.” ERIC-1019, ¶45.
`
`V. The dependent claims are obvious as shown in the Petition.
`
`PO argues that Sasaki 1994’s “orthogonal PN sequence” does not satisfy
`
`claims 2 and 3 because a “POSITA would immediately appreciate that the term
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`‘orthogonal PN sequence’ was a typographical error because it is technologically
`
`incorrect.” Response, pp.30, 32. PO further argues that a POSITA would not
`
`combine Fattouche with Sasaki 1994 (claim 8) because Fattouche is used for
`
`single-user applications, not multiple-access applications. Id., pp.32-35. These
`
`arguments fail because they ignore what the teachings of these references
`
`suggested to a POSITA. See Allied Erecting, 825 F.3d at 1381.
`
`A. A POSITA would have understood Sasaki 1994 to teach mutually
`orthogonal sequences and PN sequences.
`
`PO’s argument regarding “orthogonal PN sequences” is a distraction from
`
`the true question of whether Sasaki 1994 teaches to a POSITA modulating
`
`sequences that are mutually orthogonal (claim 2) and modulating sequences that
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`Petitioners’ Reply
`IPR2016-01169 (Patent No. 5,960,032)
`
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`are PN sequences (claim 3). A POSITA would have understood Sasaki 1994 to
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`
`
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`
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`teach both concepts.
`
`Sasaki 1994 teaches that the M available sequences are orthogonal and that
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`they are also pseudo-noise. Petition, pp.53-54. Further, Sasaki 1994 teaches that
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`the same M available sequences rely upon
`
`the different advantages of
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`orthogonality and p

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