Trials@uspto.gov
`571-272-7822
`
`Paper 30
`Entered: December 14, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE, INC., HTC CORPORATION, HTC AMERICA, INC.,
`MICROSOFT CORPORATION, MICROSOFT MOBILE OY,
`MICROSOFT MOBILE, INC., SAMSUNG ELECTRONICS CO., LTD.,
`AND SAMSUNG ELECTRONICS AMERICA, INC., ZTE (USA) INC.,
`Petitioners,
`
`v.
`
`EVOLVED WIRELESS LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01208
`Case IPR2016-012771
`Patent 7,746,916 B2
`
`____________
`
`Before CHRISTOPHER L. CRUMBLEY, PATRICK M. BOUCHER, and
`TERRENCE W. McMILLIN, Administrative Patent Judges.
`
`McMILLIN, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`1 These cases have been consolidated. Unless otherwise indicated, citations
`are to the record of IPR2016-01208.
`
`

`

`IPR2016-01208
`IPR2016-01277
`Patent 7,746,916 B2
`
`
`In response to a Petition (Paper 2, “Pet.”) filed in IPR2016-01208 by
`
`Apple, Inc. Microsoft Corporation, Microsoft Mobile OY, and Microsoft
`
`Mobile, Inc. (f/k/a Nokia, Inc.) (collectively, “Apple Petitioners”), we
`
`instituted an inter partes review of claims 1–10 of U.S. Patent No. 7,746,916
`
`B2 (“the ’916 patent”). Paper 7 (“Dec.”), 23–24. ZTE (USA) Inc., Samsung
`
`Electronics Co., Ltd., Samsung Electronics America, Inc., HTC Corporation,
`
`and HTC America, Inc. (collectively, “ZTE Petitioners”), filed a
`
`substantially identical Petition in IPR2016-01277 and trial was instituted in
`
`IPR2016-01277 on the same grounds. Paper 8, 2–3. Thereafter, the
`
`proceedings were consolidated and we required the Apple Petitioners and
`
`ZTE Petitioners (collectively, “Petitioners”) to file consolidated papers. Id.
`
`During the trial, Evolved Wireless LLC (“Patent Owner”) timely filed a
`
`Response (Paper 14, “PO Resp.”), to which Petitioners timely filed a Reply
`
`(Paper 17, “Reply”). An oral hearing was held on September 15, 2017, and
`
`a copy of the transcript was entered into the record. Paper 29 (“Tr.”).
`
`We have jurisdiction under 35 U.S.C. § 6. 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,
`
`Petitioners have shown, by a preponderance of the evidence, that claims 1–
`
`10 are unpatentable.
`
`
`
`I. BACKGROUND
`
`A. Real Parties in Interest and Related Proceedings
`
`The Apple Petitioners identify Apple, Inc., Microsoft Corporation,
`
`Microsoft Mobile OY, Microsoft Mobile, Inc. (f/k/a Nokia Inc.), Microsoft
`
`2
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`Luxembourg International Mobile SARL, and Microsoft Luxembourg USA
`
`Mobile SARL as the real parties in interest. Pet. 1. The ZTE Petitioners
`
`identify ZTE Corporation, ZTE (USA) Inc., Samsung Electronics Co., Ltd.,
`
`Samsung Electronics America, Inc., HTC Corporation, and HTC America,
`
`Inc. as the real parties in interest in IPR2016-01277 (Paper 2, 1). Patent
`
`Owner identifies only itself as a real party in interest and the owner of the
`
`’916 patent. Paper 5, 2.
`
`The ’916 patent has been asserted in several actions, captioned
`
`Evolved Wireless, LLC v. Apple, Inc., C.A. 15-cv-542-SLR (D. Del.);
`
`Evolved Wireless, LLC v. HTC Corp., C.A. 15-cv-543-SLR (D. Del.);
`
`Evolved Wireless, LLC v. Lenovo Group Ltd., C.A. 15-cv-544-SLR (D.
`
`Del.); Evolved Wireless, LLC v. Samsung Electronics Co. Ltd., C.A. 15-cv-
`
`545-SLR (D. Del.); Evolved Wireless, LLC v. ZTE Corp., C.A. 15-cv-546-
`
`SLR (D. Del.); and Evolved Wireless, LLC v. Microsoft Corp., C.A. 15-cv-
`
`547-SLR (D. Del.). Pet. 1; Paper 5, 2–3.
`
`The ’916 patent is also the subject of IPR2016-01209 and IPR2016-
`
`01280, which are consolidated and in which a final written decision on
`
`claims 1–10 is being issued on the same date as this decision.
`
`B. The ’916 Patent
`
`The ’916 patent is titled “Method and Apparatus for Generating and
`
`Transmitting Code Sequence in a Wireless Communication System.” Ex.
`
`1001, (54). The Specification states, “the code sequence or a code sequence
`
`set can be applied to 3rd Generation Partnership Project (3GPP) system or
`
`3GPP2 system as well as a Wibro system or a Wimax system.” Id. at 17:22–
`
`25. Figure 13, which is reproduced below, is a “diagram illustrating
`
`3
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`application of circular shift to the generated code sequence after a padding
`
`portion is attached.” Id. at 3:47–49.
`
`
`
`Figure 13 of the ’916 patent depicts code sequence 1301 with a “[r]equired
`
`sequence length, L”; “CAZAC sequence [1302] with prime length X ≤ L”;
`
`“[t]runcated CAZAC sequence [1303] length, L” with a padding portion
`
`added; and “[d]elayed CAZAC sequence [1304] length, L” in which the end
`
`portion from code sequence 1303 has been circularly shifted to the start of
`
`code sequence 1304. Id. at 12:37–49. Thus, the ’916 patent describes
`
`providing a code sequence for a wireless communication system which is
`
`extended by cyclic extension and rearranging the sequence by performing a
`
`circular shift.
`
`Claims 1 and 6 of the ’916 patent, reproduced below, are independent
`
`claims respectively directed at a method of transmitting the above-described
`
`sequence and at apparatus for transmitting the above-described sequence.
`
`4
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`IPR2016-01208
`IPR2016-01277
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`
`
`1. A method for transmitting a code sequence from a transmitting
`party to a receiving party in a wireless communication system,
`the method comprising:
`
`acquiring a code sequence having a second length by a cyclic
`extension of a code sequence having a first length;
`
`performing a circular shift to the code sequence having the
`second length; and
`
`transmitting the circular shifted code sequence having the second
`length to the receiving party,
`
`wherein the first length is a largest prime number smaller than
`the second length, and
`
`wherein the cyclic extension of the code sequence having the first
`length is performed such that a part of the code sequence
`having the first length, having a length corresponding to a
`difference between the first length and the second length, is
`added to either a start or an end of the code sequence having
`the first length, and
`
`wherein the circular shift is performed to the code sequence
`having the second length such that either a rear portion of the
`code sequence having the second length moves to a start of the
`code sequence having the second length, or a front portion of
`the code sequence having the second length moves to an end
`of the code sequence having the second length.
`
`6. An apparatus for transmitting a code sequence in a wireless
`communication system, the apparatus comprising:
`
`a code sequence generator for generating a code sequence having
`a second length by cyclic extension of a code sequence having
`a first length, and performing a circular shift to the code
`sequence having the second length; and
`
`a transmitting unit for transmitting the circular shifted code
`sequence having the second length,
`
`wherein the first length is a largest prime number smaller than
`the second length,
`
`5
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`
`wherein the cyclic extension of the code sequence having the first
`length is performed such that a part of the code sequence
`having the first length, having a length corresponding to a
`difference between the first length and the second length, is
`added to either a start or an end of the code sequence having
`the first length, and
`
`wherein the circular shift is performed to the code sequence
`having the second length such that either a rear portion of the
`code sequence having the second length moves to a start of the
`code sequence having the second length, or a front portion of
`the code sequence having the second length moves to an end
`of the code sequence having the second length.
`
`Ex. 1001, 17:35–57, 18:7–28.
`
`
`
`Dependent claims 2 and 7 recite, “the part of the code sequence having
`
`the first length comprises at least a cyclic prefix or a cyclic postfix.” Id. at
`
`17:58–60, 18:29–31.
`
`Dependent claims 3 and 8 recite, “the cyclic extension is performed
`
`such that a cyclic postfix of the code sequence having the first length, having
`
`the length corresponding to the difference between the first length and the
`
`second length, is added to the end of the code sequence having the first
`
`length.” Id. at 17:61–66, 18:32–37.
`
`Dependent claims 4 and 9 recite, “the code sequence having the first
`
`length is a Zadoff-Chu (ZC) sequence.” Id. at 18:1–3, 18:38–40.
`
`Dependent claims 5 and 10 recite, “the code sequence having the
`
`second length is transmitted as a reference signal sequence.” Id. at 18:4–6,
`
`18:41–43.
`
`C. Instituted Grounds of Unpatentability
`
`We instituted trial challenges of claims 1–10 of the ’916 patent on the
`
`following grounds of unpatentability. Dec. 23–24.
`
`6
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`
`Reference(s)
`
`Zhuang3273
`
`Zhuang327
`
`Basis2 Challenged Claims
`
`§ 102(e) 1–3, 5–8, and 10
`
`§ 103(a) 6–8 and 104
`
`Zhuang327 and Popović5
`
`§ 103(a) 4 and 9
`
`Zhuang327 and Hou6
`
`§ 103(a) 1–3, 5–8, and 10
`
`Zhuang327 and Hou and Popović § 103(a) 4 and 9
`
`
`
`D. Cited References
`
`Petitioners assert that Zhuang327 and Hou are prior art to the ’916
`
`patent under 35 U.S.C. § 102(e) and Popović is prior art under 35 U.S.C.
`
`
`2 The relevant sections of the Leahy-Smith America Invents Act (“AIA”),
`Pub. L. No. 112–29, 125 Stat. 284 (September 16, 2011), took effect on
`March 16, 2013. Because the application from which the ’916 patent issued
`was filed before that date, our citations to Title 35 are to its pre-AIA version.
`
`3 Zhuang327 (US 7,599,327 B2, filed Mar. 2, 2005, issued Oct. 6, 2009)
`(Ex. 1007).
`
`4 Petitioners include claim 5 in this group in the table on page 3 of the
`Petition. However, in its detailed presentation relating to this ground,
`Petitioners make no reference to claim 5. Pet. 36–42.
`
`5 Branislav M. Popović, Generalized Chirp-Like Polyphase Sequences with
`Optimum Correlation Properties, 38 IEEE Transactions on Information
`Theory, 1406–1409 (1992) (Ex. 1009).
`
`6 Hou et al. (US 8,116,195 B2, filed July 27, 2005, issued Feb. 14, 2012)
`(Ex. 1011).
`
`7
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`§ 102(b). Pet. 3–4. The earliest priority date claimed for the ’916 patent is
`
`November 28, 2005. Ex. 1001, (30), 1:6–10. Zhuang327 was filed on
`
`March 2, 2005, and Hou was filed on July 27, 2005. Popović was published
`
`in 1992. Patent Owner does not challenge the prior art status of these
`
`references. See generally PO Resp. Based on this record, Petitioners have
`
`established the cited references are prior art under 35 U.S.C. §§ 102 and 103.
`
`1. Zhuang327 (Ex. 1007)
`
`Zhuang327 is titled, “Method and Apparatus for Accessing a Wireless
`
`Communication System.” Ex. 1007, [54]. Zhuang327 relates to “a method
`
`and apparatus for randomly accessing a wireless communication system by a
`
`subscriber station in order to obtain or maintain such parameters as uplink
`
`timing, power control, channel estimation, and frequency alignment of the
`
`subscriber station.” Ex. 1007, 1:7–11. Zhuang327 states, “it is critical to
`
`design a mechanism for allowing a remote subscriber station (SS) to access
`
`the network by sending an access signal to a Base Station (BS).” Id. at
`
`1:15–18.
`
`Zhuang327 provides that the access signals used by subscriber
`
`stations to access the network are “generated based on a ranging sequence
`
`(interchangeable with ‘access sequence’ and ‘ranging code’ and ‘access
`
`code’).” Id. at 5:14–16. An example of ranging sequences given by
`
`Zhuang327 are, “Generalized Chirp Like (GCL) sequences.” Id. at 7:57–67.
`
`Figure 1 of Zhuang327 is reproduced below.
`
`8
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`
`Figure 1 of Zhuang327 depicts a communication system 100 with base
`
`stations 104 and 105 and subscriber stations 101–103. Id. at 2:46–67.
`
`Figure 8 of Zhuang327 is reproduced below.
`
`
`
`Figure 8 of Zhuang327 depicts the “steps of methods used in a subscriber
`
`station such as any of the subscriber stations 101, 102, 103 (FIG. 1).” Id. at
`
`
`
`10:25–27.
`
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`
`2. Popović (Ex. 1009)
`
`Popović is titled, “Generalized Chirp-Like [GCL] Polyphase
`
`Sequences with Optimum Correlation Properties.” Ex. 1009, 1406. Popović
`
`is an article from IEEE Transactions on Information Theory dated July,
`
`1992. Id. Popović relates to “[a] new general class of polyphase sequences
`
`with ideal periodic autocorrelation function.” Ex. 1009, 1406 (Abstract).
`
`Popović states, “[t]he new class of sequences is based on the application of
`
`Zadoff-Chu polyphase sequences.” Id. Popović also states, “it was shown
`
`that all the cyclic time shifted versions of the Zadoff-Chu sequences have
`
`the same absolute value of the aperiodic autocorrelation function.” Id. at
`
`1409.
`
`Thus, Popović recommends the use of Zadoff-Chu sequences and
`
`specifically discloses cyclic or circular shifted Zadoff-Chu sequences.
`
`3. Hou (Ex. 1011)
`
`Hou is titled, “Transmission and Reception of Reference Preamble
`
`Signals in OFDMA or OFDM Communication Systems.” Ex. 1011, [54].
`
`Hou relates to “[t]echniques for generating preamble sequences for OFDM
`
`and OFDMA communication systems based on CAZAC sequences with
`
`desired properties of constant amplitudes (CA) and zero autocorrelation
`
`(ZAC).” Id. at [57] (Abstract). Hou states, “[w]ell-known examples of
`
`CAZAC sequences include Chu and Frank-Zadoff sequences.” Id. at 3:39–
`
`40. Hou explains that if a particular sequence “is a CAZAC sequence in the
`
`frequency domain, then its corresponding time-domain sequence is also a
`
`CAZAC sequence” and “the desired properties of the constant-amplitude
`
`and zero-auto-correlation of CAZAC sequence are preserved in both time
`
`10
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`and frequency domain.” Id. at 5:12–14, 65–67. Figures 2A and 2B of Hou
`
`are reproduced below.
`
`
`
`
`
`Figure 2A of Hou depicts “an example of using the cyclic shift of initial
`
`CAZAC sequence in the frequency domain to generate two new initial
`
`CAZAC sequences in the frequency domain,” and Figure 2B of Hou depicts
`
`“an example of using the cyclic shift of the preamble sequence in the time
`
`domain to generate two new preamble sequences in the time domain.” Id. at
`
`3:11–17.
`
`11
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`
`II. ANALYSIS
`
`A. Claim Construction
`
`A claim of an unexpired patent subject to inter partes review receives
`
`the “broadest reasonable construction in light of the specification of the
`
`patent in which it appears.” 37 C.F.R. § 42.100(b); see also Cuozzo Speed
`
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). We shall construe
`
`only terms that are in controversy and then only to the extent necessary to
`
`resolve the controversy. Vivid Technologies, Inc. v. American Science &
`
`Engineering, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`
`In the “Claim Construction” section of the Petition, Petitioners
`
`discuss: (1) “acquiring/generating a code sequence having a second length
`
`by a cyclic extension of a code sequence having a first length” (claims 1 and
`
`6); (2) “cyclic prefix” (claims 2 and 7); (3) “cyclic postfix” (claims 2, 3, and
`
`7); (4) “reference signal sequence” (claims 5 and 10); (5) “a code sequence
`
`generator” (claim 6); and (6) “a transmitting unit” (claim 6). Pet. 4–11.
`
`As discussed more fully below, Patent Owner “is no longer contesting
`
`the validity of claims 1–5.” PO Resp. 2. In addition, apart from its
`
`arguments directed at underlying independent claim 6, Patent Owner does
`
`not present any arguments or contest Petitioners’ assertions relating to the
`
`limitations recited in dependent claims 7–10. See generally PO Resp.
`
`Because those limitations parallel those recited in uncontested dependent
`
`claims 2–5, we find it unnecessary to construe expressly any of the
`
`individual terms recited in claims 1–5 and 7–10.
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`12
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`
`And, as Patent Owner presents no argument or evidence relating to
`
`any element of the claims other than the first element of claim 6, we do not
`
`discuss construction of any terms outside the first element of claim 6.
`
`1. “code sequence generator”
`
`Although the parties agree that the term “code sequence generator” as
`
`recited in claim 6 should be given its plain and ordinary meaning and no
`
`explicit construction is necessary, they argue the meaning of this term. Pet.
`
`8–11; PO Resp. 14–16; Reply 3–7.
`
` Petitioners argue the term “code sequence generator” in claim 6 is not
`
`a means-plus-function limitation under 35 U.S.C. § 112 ¶ 6 and “should be
`
`given its plain meaning as understood under the BRI standard.” Pet. at 8–9.7
`
`The word “means” is not used in claim 6. As a result, there is a presumption
`
`that the limitation is not a means-plus-function limitations that should be
`
`construed in accordance with Section 112, paragraph 6. Williamson v. Citrix
`
`Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (en banc) (“When a
`
`claim term lacks the word ‘means,’ the presumption can be overcome and
`
`§112, para. 6 will apply if the challenger demonstrates that the claim term
`
`fails to ‘recite[] sufficiently definite structure’ or else recites ‘function
`
`without reciting sufficient structure for performing that function.’” (citation
`
`omitted)). On the current record, there is insufficient persuasive argument or
`
`evidence to overcome the presumption. Petitioners are not challenging the
`
`
`7 Petitioners present a similar argument relating to “transmitting unit” in
`claim 6 in which it contends this term is not a means-plus-function
`limitation. Pet. 11. Patent Owner does not present any argument relating to
`construction of “transmitting unit” or contend the cited art fails to disclose a
`“transmitting unit.” See generally PO Resp.
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`presumption (Pet. 9) and Patent Owner makes no mention of, and thus takes
`
`no position on, this issue (see generally PO Resp.). We do not construe
`
`“code sequence generator” as a means-plus-function limitation.8
`
`The existing controversy relating to the term “code sequence
`
`generator” relates to whether this term should be construed as limited to a
`
`unitary device, as Patent Owner contends. See Pet. 9–10 (“the ’916 patent
`
`does not limit the recited code sequence generator to a unitary device”); PO
`
`Resp. 15 (“a POSITA would not interpret the phrase ‘code sequence
`
`generator’ to broadly encompass hardware or software logic found across
`
`multiple devices”). Petitioners argue that Patent Owner’s narrower
`
`construction finds no support in the Specification. Pet. 9–11. Without
`
`taking a position as to whether the phrase “sequence selection unit”
`
`corresponds to the claimed “code sequence generator,” Patent Owner argues
`
`the term “unit” as used in Figure 16 of the ’916 patent in the phrase
`
`“sequence selection unit” “refer[s] to software or logic within a single
`
`device.” PO Resp. 15 (“Assuming the ‘sequence selection unit’ refers to the
`
`claimed code sequence generator, the term unit would again refer to
`
`software or hardware logic within a single device.”) But we find Figure 17
`
`of the ’916 patent, reproduced below, more pertinent to this issue.
`
`
`8 In the related District Court litigations, Petitioners challenged the
`presumption and argued this term was a means-plus-function limitation. Pet.
`8–9. Patent Owner argued this term was not a means-plus-function
`limitation. Id. The District Court ruled that Petitioners failed to overcome
`the presumption and that Section 112, paragraph 6, did not apply to this
`limitation. Evolved Wireless, LLC, v. Apple, Inc., Civ. No. 15-542-SLR, slip
`op. at 3–5 (D. Del. Nov. 14, 2016).
`
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`Figure 17 depicts “a structural diagram illustrating a basic code sequence
`
`generation unit and a code sequence length adjustment unit.” Ex. 1001,
`
`3:61–63. Figure 17 shows sub-units (the “Circular Shift Application Unit”
`
`1701b of the “Basic Code Sequence Generation Unit” 1701 and the
`
`“Padding Unit” 1702c of the “Code Sequence Length Adjustment Unit”
`
`1702) which refer to the functions (“circular shift” and “cyclic extension”)
`
`recited as performed by the “code sequence generator” in claim 6. The
`
`detailed description of Figure 17 also refers to these sub-units as distinct
`
`units performing the functions of the “code sequence generator” in claim 6.
`
`Ex. 1001, 15:38–16:7. The Specification does not support construing the
`
`phrase “code sequence generator” as a unitary device.
`
`In addition, Patent Owner cites dictionary definitions of “generator”
`
`which contain the singular terms “circuit” and “device.” PO Resp. 14–15.
`
`But we agree with Petitioners that a circuit and a device can themselves
`
`contain multiple, distinct parts. See Reply 4. These dictionary definitions
`
`do not support Patent Owner’s proposed construction.
`
`As noted above, 37 C.F.R. § 42.100 (b) provides a claim, “shall be
`
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`given its broadest reasonable construction in light of the specification of the
`
`patent in which it appears.” We conclude that, under the broadest
`
`reasonable interpretation of claim 6, the scope of the claim is not limited in
`
`the manner proposed by Patent Owner. We do not construe the phrase “code
`
`sequence generator” as limited to a unitary device.
`
`2. “generating a code sequence having a second length by a cyclic
`
`extension of a code sequence having a first length”
`
`The parties argue the construction of the following phrase in claim 6:
`
`“generating a code sequence having a second length by a cyclic extension of
`
`a code sequence having a first length.” Petitioners argue:
`
`the broadest reasonable interpretation (BRI) of the phrase
`“acquiring/generating a code sequence having a second length by
`a cyclic extension of a code sequence having a first length” is
`broad enough to encompass “acquiring/generating a code
`sequence having a second length through execution of one or
`more operations that include performing a cyclic extension of a
`code sequence having a first length.”
`
`Pet. 5. Thus, Petitioners argue the word “by” in the context of claims 1 and
`
`6 should be interpreted as expanded to: “through execution of one or more
`
`operations that include performing.”
`
`
`
`In making this argument, Petitioners fail to cite to the claims, the
`
`specification, or the file history, and do not argue the claims, specification,
`
`or file history support the proposed interpretation. Pet. 5–6. The only
`
`support cited is the “plain and ordinary meaning” based on a general purpose
`
`dictionary.9 Id.
`
`
`9 American Heritage Dictionary of the English Language (4th ed. 2000) (Ex.
`1005).
`
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`Patent Owner does not propose a construction of this phrase but,
`
`instead, argues Petitioners’ proposed construction broadens the claim
`
`language beyond its reasonable meaning and should be rejected. PO Resp.
`
`16–21. At oral argument, Patent Owner clarified its objection to Petitioners’
`
`proposed construction. Tr. 61:21–22 (“Petitioners’ construction allows
`
`anything to be put in the middle. Anything.”). Specifically, Patent Owner
`
`contends, “Petitioners’ construction would unreasonably allow any number
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`and variety of mathematical operations to occur.” PO Resp. 17; see also Tr.
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`57:6–17. We agree with Patent Owner that Petitioners’ proposed
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`construction is unreasonably broad. Therefore, we do not adopt the
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`construction of this limitation argued by Petitioners.10
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`B. Claims 1–5
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` Patent Owner indicates it “is no longer contesting the validity of
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`claims 1–5.” PO Resp. 2. During oral argument, Patent Owner stated that
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`Petitioners “still bear the burden of proof so if the Board believes that what
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`they set forth is sufficient to satisfy that burden, then the Board is free to
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`
`10 Although we do not adopt Petitioners’ proposed construction that would
`unreasonably construe the contested limitation to allow “one or more”
`undefined operations to occur, we also reject Patent Owner’s argument that
`this limitation should be construed so as not to allow any additional,
`unrecited operations to occur. Tr. 54:11–17 (“the plain meaning of the
`language says we have a first operation performed and then on the output of
`that operation, we have a second operation performed . . . to try to put
`something in to undo the direct connection between the output of Stage 1,
`the output of the cyclic extension, to the input of the circular shift is just not
`proper.” See also PO Resp. 22–24. We reject both Petitioners’ overly broad
`any undefined operations construction and Patent Owner’s overly narrow no
`unrecited operations implied construction as unreasonable extremes.
`
`
`17
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`enter in that judgment.” Tr. 4:17–22. Patent Owner made no arguments as
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`to claims 1–5. See generally PO Resp.; Tr. 23–24.
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`Petitioners challenged, and we instituted trial on, claims 1–3 and 5 on
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`the following grounds: (1) anticipation over Zhuang327 and (2) obviousness
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`over Zhuang327 and Hou. Dec. 23–24. Petitioners challenged, and we
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`instituted trial on, claim 4 on the following grounds: (1) obviousness over
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`Zhuang327 and Popović and (2) obviousness over Zhuang327, Hou, and
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`Popović. Id.
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`To prevail on its challenges, Petitioners must demonstrate by a
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`preponderance of the evidence that the claims are unpatentable. 35 U.S.C.
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`§ 316(e); 37 C.F.R. § 42.1(d). “In an [inter partes review], the petitioner has
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`the burden from the onset to show with particularity why the patent it
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`challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc. 815 F.3d
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`1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter
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`partes review petitions to identify “with particularity . . . the evidence that
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`supports the grounds for the challenge to each claim”)). This burden never
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`shifts to Patent Owner. See Dynamic Drinkware, LLC. v. Nat’l Graphics,
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`Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v.
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`Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the
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`burden of proof in inter partes review). Furthermore, a petitioner does not
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`satisfy its burden of proving unpatentability by employing “mere conclusory
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`statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed.
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`Cir. 2016).
`
`To anticipate a claim under 35 U.S.C. § 102, a prior art reference must
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`disclose every limitation of the claimed invention and must describe the
`
`18
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`applicant’s claimed invention sufficiently to have placed a person of
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`ordinary skill in the field of the invention in possession of it. In re
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`Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997); In re Spada, 911 F.2d 705,
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`708 (Fed. Cir. 1990).
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`A claim is unpatentable as obvious under 35 U.S.C. § 103 if the
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`differences between the claimed subject matter and the prior art are “such
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`that the subject matter as a whole would have been obvious at the time the
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`invention was made to a person having ordinary skill in the art to which said
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`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
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`(2007). The question of obviousness is resolved on the basis of underlying
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`factual determinations, including: (1) the scope and content of the prior art;
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`(2) any differences between the claimed subject matter and the prior art;
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`(3) the level of skill in the art; and (4) objective evidence of non-
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`obviousness, i.e., secondary considerations.11 Graham v. John Deere Co.,
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`383 U.S. 1, 17–18 (1966).
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`Additionally, the obviousness inquiry typically requires an analysis of
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`“whether there was an apparent reason to combine the known elements in
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`the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In
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`re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated
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`reasoning with some rational underpinning to support the legal conclusion of
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`obviousness”)); see In re Warsaw Orthopedic, Inc., 832 F.3d 1327, 1333
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`(Fed. Cir. 2016) (citing DyStar Textilfarben GmbH & Co. Deutschland KG
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`v. C. H. Patrick Co., 464 F.3d 1356, 1360 (Fed. Cir. 2006)).
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`11 The parties do not address secondary considerations, which, accordingly,
`do not form part of our analysis.
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`19
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`
`With regard to the level of ordinary skill in the art, Petitioners’
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`declarant,12 Jonathan Wells, Ph. D., testifies that:
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`A person of ordinary skill in the art at or before the time
`of the invention of the ’916 patent (“POSA”) would have had a
`Master’s of Science Degree in an academic area emphasizing
`Electrical Engineering, Physics, Computer Engineering, or an
`equivalent field (or a similar technical Master’s Degree, or higher
`degree) with a concentration in wireless communication and
`networking systems. Alternatively, a POSA would have had a
`Bachelor’s degree (or higher) in an academic area emphasizing
`Electrical Engineering, Physics, Computer Engineering, or an
`equivalent field as well as at least 2 years of academic or industry
`experience in wireless communications and networking systems.
`A POSA would also have had experience with the wireless
`Standard Setting Organizations such as ETSI, IEEE, and 3GPP,
`and would have been familiar with relevant standards and draft
`standards directed to wireless communications. Additional
`education in a relevant field, such as electrical engineering or
`physics, or industry experience may compensate for a deficit in
`one of the other aspects of the requirements stated above. I am
`familiar with the knowledge and capabilities of one of ordinary
`skill in these areas based on my experience working with
`industry, with undergraduate and post-graduate students, with
`colleagues from academia, and with engineers practicing in
`industry.
`
`Ex. 1003 ¶ 34. Patent Owner does not make any argument or present any
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`evidence with regard to the level of ordinary skill in the art or contest any
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`part of Petitioners’ showing. See generally PO Resp. We find Petitioners’
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`proposal reasonable, and accordingly, based on this record, we adopt the
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`level of skill in the art proposed by Petitioners.
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`12 Patent Owner did not submit an expert declaration.
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`20
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`
`1. Independent Claim 1
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`Claim 1 is a method claim. The preamble of claim 1 recites, “[a]
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`method for transmitting a code sequence from a transmitting party to a
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`receiving party in a wireless communication system.” As shown by
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`Petitioners (Pet. 18–19 (citing Wells Decl. ¶¶ 112–113)), Zhuang327
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`discloses, “a method and apparatus for randomly accessing a wireless
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`communication system by a subscriber station. Ex. 1007, 1:7–9.
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`Zhuang327 states, “[i]n a wireless communication system, it is critical to
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`design a mechanism for allowing a remote subscriber station (SS) to access
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`the network by sending an access signal to a Base Station.” Id. at 1:15–18.
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`Zhuang327 also states, “[e]ach random access signal is generated based on a
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`ranging sequence (interchangeable with ‘access sequence’ and ‘ranging
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`code’ and ‘access code’) that is randomly chosen from a code group.” Id. at
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`5:14–17. We find Zhuang327 discloses each element of the preamble of
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`claim 1.
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`The first step of claim 1 is “acquiring a code sequence having a
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`second length by a cyclic extension of a code sequence having a first
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`length.” As shown by Petitioners (Pet. 19–23 (citing Wells Decl. ¶¶ 114–
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`122)), Zhuang327 discloses first generating a GCL (Generalized Chirp Like)
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`sequence of the length “NG.” Ex. 1007, 7:57–8:10. Zhuang327 states,
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`“when NG is smaller than K, the corresponding set of sequences of length K
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`is generated by copying (K-NG) terms from the