`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`
`SONY CORPORATION
`Petitioner,
`
`v.
`
`BROADCOM CORPORATION,
`Patent Owner.
`_______________
`
`Inter Partes Review No. IPR2017-00461
`
`U.S. Patent No. 7,616,955 B2
`_____________________________________________________________
`
`PATENT OWNER BROADCOM CORPORATION'S PRELIMINARY
`RESPONSE UNDER 37 C.F.R. § 42.107 TO PETITION FOR INTER
`PARTES REVIEW OF U.S. PATENT NO. 7,616,955 B2
`
`
`
`

`

`IPR2017-00461
`
`TABLE OF CONTENTS
`
`
`I.
`INTRODUCTION ......................................................................................... 1
`II. BACKGROUND ............................................................................................ 2
`A.
`Procedural History ................................................................................. 2
`B.
`The '955 Patent ...................................................................................... 3
`1.
`The Invention .............................................................................. 3
`2.
`Prosecution History ..................................................................... 6
`C.
`Petitioners' Cited References ................................................................. 9
`III. CLAIM CONSTRUCTION .......................................................................... 9
`A.
`Legal Standard ....................................................................................... 9
`B.
`Each of the Identified Claim Terms Has a Plain and Ordinary
`Meaning and Need Not Be Construed ................................................ 10
`1.
`"tone" ......................................................................................... 10
`IV. LEGAL STANDARDS ................................................................................ 11
`A.
`Inter Partes Review ............................................................................. 11
`B. Anticipation ......................................................................................... 11
`C. Obviousness ......................................................................................... 12
`PETITIONERS' ALLEGATIONS FAIL FOR LACK OF
`SUPPORT ..................................................................................................... 15
`A.
`The Petition Does Not Properly Define Applicable Legal
`Standards for Anticipation and/or Obviousness .................................. 15
`Count 1: Ling Does Not Teach or Suggest Each and Every
`Limitation of Claims 1-27, 29, and 30 of the '955 Patent ................... 16
`1.
`Claims 1-10, 21-27, 29, and 30 ................................................. 17
`a.
`The Cited Art Fails to Disclose Material
`Elements of the Claims ................................................... 17
`
`V.
`
`B.
`
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`IPR2017-00461
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`b.
`
`C.
`
`Claims 1 and 21 Were Specifically Amended
`to Distinguish the Type of Art Cited by the
`Petition ............................................................................ 22
`2.
`Claims 11-20 ............................................................................. 25
`Count 2: Claims 23 and 27-29 of the '955 Patent Are Not
`Unpatentable Under 35 U.S.C. § 103(a) Over Ling In View
`of Walton ............................................................................................. 25
`D. Count 3: Claims 1-30 of the '955 Patent Are Not
`Unpatentable Under 35 U.S.C. § 103(a) Over Ling
`In View of Walton and Kim ................................................................ 26
`1.
`Claims 1-10, and 21-30 ............................................................. 26
`2.
`Claims 11-20 ............................................................................. 30
`VI. CONCLUSION ............................................................................................ 30
`VII. CERTIFICATION PURSUANT TO 37 C.F.R. § 42.24(d) ...................... 32
`
`
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`IPR2017-00461
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`LIST OF EXHIBITS
`
`1001
`
`U.S. Patent No. 7,616,955 B2
`
`1002
`
`File History of U.S. Patent No. 7,616,955 B2
`
`1003
`
`Declaration of Dr. Tony Acampora
`
`1004
`
`U.S. Patent App. Pub. No. 2003/0043928 (“Ling”)
`
`1005
`
`U.S. Patent App. Pub. No. 2004/0141566 (“Kim”)
`
`1006
`
`Stüber et al., “Broadband MIMO-OFDM Wireless
`Communications,” 92 Proceedings of the IEEE 271 (2004)
`
`1007
`
`U.S. Patent App. No. 2003/0035491 (“Walton”)
`
`1008
`
`U.S. Patent No. 6,785,341
`
`
`
`iii
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`IPR2017-00461
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`Patent Owner Broadcom Corporation ("Broadcom") hereby respectfully
`
`submits this Preliminary Response to the Petition seeking inter partes review in
`
`this matter. This filing is timely under 35 U.S.C. § 313 and 37 C.F.R. § 42.107(b),
`
`as it is being filed within three months of the January 6, 2017 mailing date of the
`
`Notice of Filing Date Accorded to Petition and Time for Filing Patent Owner
`
`Preliminary Response (Paper 7).
`
`A trial should not be instituted in this matter as none of the references or
`
`combinations of references relied upon by Petitioners gives rise to a reasonable
`
`likelihood of Petitioners prevailing with respect to any challenged claim of U.S.
`
`Patent No. 7,616,955 B2 (the "'955 Patent").
`
`I.
`
`INTRODUCTION
`
`The Petition for Inter Partes Review Case No. IPR2017-00461 (the
`
`"Petition") filed by Sony Corporation ("Petitioners") challenges the validity of
`
`Claims 1-30 of the '955 Patent. "The Director may not authorize an inter partes
`
`review to be instituted unless the Director determines that the information
`
`presented in the petition filed under section 311 … shows that there is a reasonable
`
`likelihood that the petitioner would prevail with respect to at least 1 of the claims
`
`challenged …." 35 U.S.C. § 314(a). The Patent Trial and Appeal Board (the
`
`"Board") should not institute inter partes review of the '955 Patent because there is
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`IPR2017-00461
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`no reasonable likelihood of Petitioners prevailing as to any of these claims of the
`
`'955 Patent.
`
`As discussed below, the anticipation rejections proposed in the Petition are
`
`deficient for failing to set forth each and every feature arranged as recited by the
`
`respective claims of the '955 Patent and, thus, do not establish a prima facie case of
`
`anticipation. Further, all of the obviousness combinations proposed in the Petition 
`
`likewise fail to set forth each and every feature of the claims of the '955 Patent, and
`
`those proposed combinations
`
`lack articulated reasoning with a rational
`
`underpinning to support a legal conclusion of obviousness. See KSR Int'l Co. v.
`
`Teleflex, Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988
`
`(Fed. Cir. 2006)).
`
` Indeed, the Petition only provides "mere conclusory
`
`statement[s]" (id.) that the claims are obvious, and lacks any cogent reasoning as to
`
`why a person of ordinary skill in the art would modify or combine the cited
`
`references in the manner recited by the challenged claims of the '955 Patent.
`
`II. BACKGROUND
`
`A.
`
`Procedural History
`
`Petitioners make and sell products that infringe the '955 Patent. Broadcom
`
`has filed a lawsuit against Petitioners for infringement of the '955 Patent and seven
`
`other patents owned by Broadcom. See Broadcom Corp. et al. v. Sony Corp. et al.,
`
`No. 16-cv-1052 (C.D. Cal. 2016) (the "Lawsuit"). Petitioners challenge Claims 1-
`
`2
`
`

`

`30 of the '955 Patent; at least Claims 21, 22, and 24-26 have been asserted against
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`IPR2017-00461
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`Petitioners in the Lawsuit.
`
`B.
`
`The '955 Patent
`
`1.
`
`The Invention
`
`The '955 Patent was filed on February 5, 2005, and issued on November 10,
`
`2009. Exhibit 1001 at 1. The '955 Patent claims priority from provisional U.S.
`
`Application No. 60/267,467, filed November 12, 2004. See id. The '955 Patent
`
`discloses and claims methods and systems for bit and coding assignments for
`
`transmission by a plurality of antennas in a closed loop wireless local area network
`
`("WLAN") system. See id.
`
`Modern WLAN systems often employ stations that each have multiple
`
`antennas (described as a multiple-input-multiple-output, or "MIMO," system).
`
`See, e.g., id., Fig. 2. The Institute for Electrical and Electronics Engineers
`
`("IEEE") has developed several standards, referred to as the "802.11" standards,
`
`that provide specifications for compatibility among WLAN vendors. In 2003, the
`
`IEEE established a task group, referred to as "802.11n," to investigate a new
`
`standard to support data rates higher than 100MB/s. See id. at 1:32-35. One of the
`
`features of this standard, as embodied in one inventive aspect of the '955 Patent, is
`
`the concept of "closed loop" feedback, in which a receiving station provides
`
`feedback to a transmitting station about the quality of the link between respective
`
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`IPR2017-00461
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`antennas of the two stations, which the transmitting station can use to adapt the
`
`signals (e.g., power, phase) sent from each antenna of the transmitting station to a
`
`respective antenna of the receiving station, including using a "beamforming"
`
`technique to steer signals from a particular transmit antenna to a particular receive
`
`antenna. See id. at 1:35-45.
`
`One inventive concept of the '955 Patent is the assignment of bits and coding
`
`schemes based on the characteristics of the RF signal (e.g., power, phase, noise
`
`rations) sent over particular antennas on the transmitting station, based on the
`
`feedback received from the receiving station, to address problems of signal loss of
`
`a signal transmitted from the transmitting station to the receiving station. See id. at
`
`4:13-19; see also id. at 18:4-16, 18:48-60, and 19:27-40.
`
`Bit assignment, in certain embodiments, is the process of assigning a number
`
`of bits to be transmitted on each antenna, respectively. As the '955 Patent explains,
`
`a transmitting device might generate a number of source signals that is equal to the
`
`number of transmitting antennas at the transmitting device. See id. at 5:63-6:2.
`
`According to embodiments of the invention, if a plurality of bits of information are
`
`to be transmitted, "bit assignment, . . . may be utilized to determine how many bits
`
`bj, . . . may be transmitted in an individual source signal sj." Id. at 10:43-45. Thus,
`
`for example, a transmitter's antenna that has a relatively stronger signal with one of
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`IPR2017-00461
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`the receiver's antennas might transmit more bits than a different antenna with a
`
`relatively weaker signal with another of the receiver's antennas.
`
`Modulation coding, also known as channel coding, is another technique used
`
`to improve reliability in wireless transmission. In particular, channel coding "may
`
`improve the ability to successfully recover transmitted data at a receiver by
`
`appending redundant information to the input data prior to transmission . . . ." Id.
`
`at 4:56-59. The term "coding rate" refers to "[t]he ratio of the number of bits in the
`
`binary input data block to the number of bits in the transformed data block," and
`
`"may be specified using the notion ib/tb, where tb represents the total number of bits
`
`which comprise a coding group of bits, while ib represents the number of
`
`information bits that are contained in the group of bits tb." Id. at 4:59-65. The
`
`difference between tb and ib, then "may represent redundant bits which may enable
`
`the receiver . . . to detect and correct errors introduced during transmission." Id. at
`
`4:66-5:1. This increased reliability, of course, comes with a price: a relatively
`
`lower coding rate can result in "a reduction in the information transfer rates
`
`between the transmitter . . . and the receiver . . . ." Id. at 5:4-6.
`
`Thus, both the bit assignment and the coding rate of a particular signal, for
`
`transmission, as an RF signal of particular characteristics, by a particular antenna,
`
`affect the amount of information that can be transmitted in that signal, and certain
`
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`IPR2017-00461
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`embodiments of the invention contemplate the adjustment of these parameters
`
`based on feedback received at the transmitter. See id. at 10:35-47.
`
`2.
`
`Prosecution History
`
`The application for the '955 Patent was filed February 7, 2005 and relies on
`
`the priority of a provisional application filed November 12, 2004. As filed, the
`
`application included thirty claims, including independent Claims 1, 11, and 21.
`
`Exhibit 1002 at 142-47. An Office Action mailed August 27, 2008 rejected all
`
`claims under 35 U.S.C. § 102(a) as being unpatentable over U.S. Patent
`
`No. 5,070,536 to Mahany et al. ("Mahany") in view of U.S. PreGrant Publication
`
`No. 2005/0113041 to Polley et al. ("Polley"). See id. at 68-69. In response to this
`
`rejection, the applicant amended the independent claims as shown below:
`
`in a
`
`information
`
`for communicating
`A method
`1.
`communication system, the method comprising:
`concurrently transmitting, to a single receiving device, data via
`a plurality of RF channels utilizing a plurality of transmitting
`antennas;
`receiving feedback information related to said plurality of RF
`channels;
`assigning bits for transmission via at least one of said plurality
`of RF channels transmitting antennas based on said feedback
`information; and
`
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`IPR2017-00461
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`in a
`
`information
`
`transmitting at least a portion of subsequent data having at least
`a first coding rate based on said assignment of said bits via said at
`least one of said plurality of RF channels.
`
`for communicating
`11. A method
`communication system, the method comprising:
`concurrently receiving, from a single transmitting device, data
`via a plurality of RF channels utilizing a plurality of receiving
`antennas; and
`transmitting feedback information related to said plurality of
`RF channels, wherein:
`said transmitted feedback information is utilized to assign bits
`for transmission via said at least one of said plurality of RF channels
`based; and
`at least a portion of subsequent data having at least a first
`coding rate is transmitted based on said assignment of bits via said at
`least one of said plurality of RF channels.
`
`for communicating
`system
`21. A
`communication system, the system comprising:
`a transmitter that concurrently transmits, to a single receiving
`device, data via a plurality of RF channels utilizing a plurality of
`transmitting antennas;
`said transmitter receives feedback information related to said
`plurality of RF channels;
`
`information
`
`in a
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`IPR2017-00461
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`said transmitter assigning bits for transmission via at least one
`of said plurality of RF channels transmitting antennas based on said
`feedback information; and
`said transmitter transmits at least a portion of subsequent data
`having at least a first coding rate based on said assignment of said bits
`via said at least one of said plurality of RF channels.
`
`Id. at 49-53.
`
`In connection with these amendments, the applicant argued that the cited
`
`references, and Polley in particular, "[did] not teach 'assigning bits for transmission
`
`via said plurality of transmitting antennas based on said feedback information,' as
`
`is recited in claim 1." Id. at 57. Instead, the applicant explained, Polly teaches a
`
`system where a full channel bandwidth is split into a set of sub-channels, and a
`
`transmitting power level is assigned to each sub-channel. See id. In other words,
`
`the applicant argued that the amendment of, e.g., Claim 1 to recite "assigning bits
`
`for transmission via the plurality of antennas," was materially different from the
`
`previously-recited "assigning bits for transmission via at least one of the plurality
`
`of RF channels," and that based on this distinction, the claims were patentable over
`
`the cited combination. See id.
`
`The Examiner agreed and withdrew the art-based rejections. After the
`
`applicant overcame a subsequent rejection under 35 U.S.C. § 112, the claims were
`
`allowed. See id. at 20-21.
`
`8
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`IPR2017-00461
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`C.
`
`Petitioners' Cited References
`
`Petitioners are relying on the following three references as alleged prior art:
`
` U.S. Pre-Grant Publication No. 2003/0043928 to Ling ("Ling")
`
`(Petition Exhibit 1004)
`
` U.S. Pre-Grant Publication No. 2003/0035491 to Walton ("Walton")
`
`(Petition Exhibit 1007)
`
` U.S. Pre-Grant Publication No. 2004/0141566 to Kim ("Kim")
`
`(Petition Exhibit 1005)
`
`For at least the reasons explained below, Petitioners have failed to show that any of
`
`the above-listed references render unpatentable any of the challenged claims of the
`
`'955 Patent, either alone or in combination.
`
`III. CLAIM CONSTRUCTION
`
`A. Legal Standard
`
`In applying the broadest reasonable construction, the Board gives the claim
`
`terms their plain meaning unless the plain meaning is inconsistent with the
`
`specification. St. Jude Med., Cardiology Div., Inc. v. Bd. Of Regents of Univ. of
`
`Mich., IPR 2013-00041, Paper 12 at 6 (PTAB May 2, 2013) (applying the plain
`
`and ordinary meaning of "alcohol" where no reason to depart from that definition
`
`was evident in the specification); see also Thorner v. Sony Computer Entm't Am.
`
`LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (quoting Vitronics Corp. v.
`
`9
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`IPR2017-00461
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`Conceptronic, Inc., 90 F.3d 1576, 1580 (Fed.Cir.1996)) ("There are only two
`
`exceptions to this general rule [that a claim term is given its ordinary meaning]:
`
`1) when a patentee sets out a definition and acts as his own lexicographer, or
`
`2) when the patentee disavows the full scope of a claim term either in the
`
`specification or during prosecution."); In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
`
`1989).
`
`B.
`
`Each of the Identified Claim Terms Has a Plain and Ordinary
`Meaning and Need Not Be Construed
`
`1.
`
`"tone"
`
`The Petition identifies "tone" as a term that requires construction pursuant to
`
`37 C.F.R. §§ 42.100(b) and 42.104(b)(3). Specifically, the Petition alleges that the
`
`broadest reasonable interpretation of the term, "tone," is "a frequency subchannel."
`
`See Petition at 12. This construction improperly imports limitations into the
`
`claimed term. In particular, the construction limits the term tone to a "subchannel,"
`
`when there is nothing in the claims or specification that limits the term, "tone," in
`
`this way. In fact, the portion of the '955 Patent's specification referenced by the
`
`Petition refers to "a frequency selected from a range of frequencies," without
`
`respect to any subchannel. See Exhibit 1001 at 11:27-29. Thus, the broadest
`
`reasonable interpretation of "tone" is "a frequency."
`
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`IPR2017-00461
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`IV. LEGAL STANDARDS
`
`A.
`
`Inter Partes Review
`
`To institute an inter partes review, there must be a "reasonable likelihood
`
`that the petitioner would prevail with respect to at least one of the claims
`
`challenged in the petition." 35 U.S.C. § 314(a). Petitioners therefore carry the
`
`burden to "demonstrate that there is a reasonable likelihood that at least one of the
`
`claims challenged in the petition is unpatentable." 37 C.F.R. § 42.108(c).
`
`The Petition must include "[a] full statement of the reasons for the relief
`
`requested, including a detailed explanation of the significance of the evidence
`
`including material facts, and the governing law, rules, and precedent." 37 C.F.R.
`
`§ 42.22(a)(2); see also 37 C.F.R. § 42.104 (requiring IPR petitions to meet the
`
`requirements of §§ 42.6, 42.8, and 42.24).
`
`As discussed in greater detail below, the Petition fails to establish that there
`
`is a reasonable likelihood that any challenged claim is unpatentable and Petitioners
`
`therefore have failed to meet their burden to show sufficient grounds to institute
`
`inter partes review.
`
`B. Anticipation
`
`The Petition fails to present any anticipation arguments sufficient to create a
`
`"reasonable likelihood that the petitioner would prevail with respect to at least one
`
`of the claims challenged." 35 U.S.C. § 314(a). "To establish anticipation, each
`
`11
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`

`IPR2017-00461
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`and every element in a claim, arranged as is recited in the claim, must be found in a
`
`single prior art reference." ZTE v. ContentGuard, IPR 2013-00134, Paper 12 at 24
`
`(PTAB June 19, 2013) (citing Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d
`
`1376, 1383 (Fed. Cir. 2001); NetMoneyIn, Inc. v. Verisign, Inc., 545 F.3d 1359,
`
`1369 (Fed. Cir. 2008)). "[To anticipate,] [t]here must be no difference between the
`
`claimed invention and the reference disclosure, as viewed by a person of ordinary
`
`skill in the field of the invention." Scripps Clinic & Res. Found. v. Genentech,
`
`Inc., 927 F.2d 1565, 1576 (Fed. Cir. 1991). Thus, the Board "must analyze prior
`
`art references as a skilled artisan would." Microsoft Corp. v. Proxyconn, Inc.,
`
`IPR 2012-00026, Paper 73 at 33 (PTAB Feb. 19, 2014) (internal citations omitted).
`
`C. Obviousness
`
`The Petition also fails to present any obviousness arguments sufficient to
`
`create a "reasonable likelihood that the petitioner[s] would prevail with respect to
`
`at least one of the claims challenged." 35 U.S.C. § 314(a). Patentability requires
`
`that the claimed invention would not have been obvious to a person with ordinary
`
`skill in the art at the time of the invention. See, e.g., Panduit Corp. v. Dennison
`
`Mfg. Co., 810 F.2d 1561, 1565-68 (Fed. Cir. 1987). The relevant factual inquiries
`
`include: (1) the level of ordinary skill in the pertinent art; (2) the scope and content
`
`of the prior art; (3) the differences between the claimed invention and the prior art;
`
`and (4) objective secondary considerations of non-obviousness, if any. See, e.g.,
`
`12
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`IPR2017-00461
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`SIBIA Neurosciences v. Cadus Pharm. Corp., 225 F.3d 1349, 1355 (Fed. Cir.
`
`2000); In re Dembiczak, 175 F.3d 994, 998 (Fed. Cir. 1999), abrogated on other
`
`grounds; In re Gartside, 203 F.3d 1305 (Fed. Cir. 2000); B.F. Goodrich Co. v.
`
`Aircraft Braking Sys. Corp., 72 F.3d 1577, 1582 (Fed. Cir. 1996). The person of
`
`ordinary skill in the art is a hypothetical person who is presumed to know the
`
`relevant prior art. See Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807
`
`F.2d 955, 962 (Fed. Cir. 1986).
`
`Additionally, "a patent composed of several elements is not proved obvious
`
`merely by demonstrating that each element was, independently, known in the prior
`
`art." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Rather, to establish
`
`prima facie obviousness, the cited references must be shown to disclose or suggest
`
`each claimed element and it must be shown that it would have been obvious to
`
`combine the teachings in the references together to arrive at the claimed invention.
`
`See In re Lee, 277 F.3d 1338, 1344 (Fed. Cir. 2002). There must be an apparent
`
`reason to combine the cited references to create the specific invention.
`
`In addition, a showing that the reason to combine stems from the nature of
`
`the problem to be solved must be "clear and particular, and it must be supported by
`
`actual evidence." Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1334 (Fed.
`
`Cir. 2002). The combined art must narrow the scope of the inventor's task to the
`
`point where it would have been obvious to try the particular invention claimed. If
`
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`IPR2017-00461
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`the particular invention lies hidden in a multitude of other options suggested by the
`
`art, the invention is not obvious. See, e.g., Leo Pharm. Prods. Ltd. v. Rea, 726
`
`F.3d 1346, 1356 (Fed. Cir. 2013) ("[T]he breadth of the[] choices [disclosed in the
`
`art] and the numerous combinations indicate that these disclosures would not have
`
`rendered the claimed invention obvious to try."); In re Kubin, 561 F.3d 1351,
`
`1359-60 (Fed. Cir. 2009) (stating that what is "obvious to try" is erroneously
`
`equated with obviousness where "what would have been 'obvious to try' would
`
`have been to vary all parameters or try each of numerous possible choices until one
`
`possibly arrived at a successful result, where the prior art gave either no indication
`
`of which parameters were critical or no direction as to which of many possible
`
`choices is likely to be successful") (internal citations omitted); Medichem, S.A. v.
`
`Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006).
`
`Hindsight is forbidden in an obviousness analysis. See In re Dembiczak, 175
`
`F.3d 994, 998 (Fed. Cir. 1999), abrogated on other grounds; see also Kinetic
`
`Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1368 (Fed. Cir. 2012).
`
`This means that the reasons for combining references or modifying the teachings
`
`of a reference must be apparent at the time of the invention and thus apparent
`
`without the use of hindsight. A telltale sign of an impermissible hindsight analysis
`
`is that the analysis "use[s] the invention to define the problem that the invention
`
`solves." Mintz v. Dietz & Watson, Inc., 679 F.3d 1372, 1376-78 (Fed. Cir. 2012)
`
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`IPR2017-00461
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`(reversing a district court that conducted its analysis using hindsight because the
`
`district court's obviousness finding was improperly based on art directed to the
`
`solution as opposed to art directed to the problem).
`
`V.
`
`PETITIONERS' ALLEGATIONS FAIL FOR LACK OF SUPPORT
`
`A. The Petition Does Not Properly Define Applicable Legal
`Standards for Anticipation and/or Obviousness
`
`Notably absent from the Petition is any statement of the applicable legal
`
`standards for anticipation and obviousness, as required by 37 C.F.R. § 42.22(a).
`
`Petitioners allege that all of the challenged claims are either anticipated by, or
`
`obvious over, at least one of the cited references. While Petitioners' expert, Dr.
`
`Anthony Acampora, recounts his general understanding of patent law in his
`
`declaration, he does not identify the specific governing law, rules, and precedent
`
`supporting his opinions. See Exhibit 1003 at ¶¶ 17-21. Moreover, Dr. Acampora
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`is not a lawyer or a patent agent admitted to practice before the USPTO or the
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`Board.
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`Petitioners' failure to state what legal standards they are applying renders the
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`Petition fatally defective under 37 C.F.R. § 42.22(a), which requires that a petition
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`provide "[a] full statement of the reasons for the relief requested, including a
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`detailed explanation of the significance of the evidence including material facts,
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`and the governing law, rules, and precedent." (Emphasis added). Dr. Acampora's
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`declaration, which is outside the four corners of the Petition, does not remedy the
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`IPR2017-00461
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`defects in the Petition and does not provide competent testimony as to the
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`governing law, rules, and precedent. Moreover, the Petition itself does not even
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`make reference to, much less adopt, Dr. Acampora's understanding of any legal
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`principles, and therefore is devoid of any analysis of the legal standards for
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`obviousness. As a result of this omission, the Petition should be denied as to all
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`challenged claims.
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`B. Count 1: Ling Does Not Teach or Suggest Each and Every
`Limitation of Claims 1-27, 29, and 30 of the '955 Patent
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`Ling does not anticipate any of the claims listed in Count 1. While the '955
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`Patent is directed toward technology used in WLAN (e.g., 802.11) systems, Ling
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`(as well as Walton and Kim, cited in connection with Counts 2 and 3) is directed
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`toward cellular telephone systems. See Exhibit 1004. Such systems, which are
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`obviously wireless in nature and can employ MIMO technology like WLAN
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`systems, nevertheless are dissimilar in many respects from WLAN systems. In
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`particular, with relevance to the '955 Patent, the systems disclosed in Ling, Walton,
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`and Kim are focused on the a cellular implementation that uses Orthogonal
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`Frequency Division Multiplexing (OFDM) to divide transmit an unspecified
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`number of subchannels on each antenna, such that bits are assigned, if anything, to
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`subchannels, not antennas; conversely, the claims of the '955 Patent, directed to a
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`WLAN system, require the assignment of bits for transmissions on the antennas
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`themselves. Compare Exhibit 1007, ¶¶ 0004-05 (describing common cellular
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`environments), Exhibit 1004, ¶ 0004 (same), and Exhibit 1005, ¶¶ 0002-007
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`(same), with Exhibit 1001 at 2:1-5 (describing the use of the '955 Patent in "closed
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`loop WLAN"). As such, due to their focus on subchannels in a cellular OFDM
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`implementation, the references neglect to teach any assignment of bits for
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`transmission by particular antennas, as the claims require. Essentially, the Petition
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`attempts to import three references from a different technology into the field to
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`which the '955 Patent is directed. Thus, it is unsurprising that the cited references
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`lack critical features found in the claims of the '955 Patent.
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`1.
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`Claims 1-10, 21-27, 29, and 30
`
`a.
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`The Cited Art Fails To Disclose Material Elements of
`the Claims
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`For example, independent Claim 1 of the '955 Patent includes the feature,
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`"assigning bits for transmission via said plurality of transmitting antennas based on
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`said feedback information." Exhibit 1001 at 18:11-12. Similarly, independent
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`Claim 21 recites, "said transmitter is operable to assign bits for transmission via
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`said plurality of transmitting antennas based on said feedback information." Id. at
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`19:34-36. With respect to Claim 1, which is exemplary, the Petition alleges, in
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`conclusory fashion, "Ling discloses this claim element." Petition at 17. The
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`Petition then fails to demonstrate, in any way, how Ling actually discloses this
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`element. Instead, the Petition quotes, without explanation, portions of Ling
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`teaching "determining a number of bits per modulation symbol supported by each
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`transmission channel," and explaining how bits are assigned to symbols. Id. (citing
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`Exhibit 1003 at ¶¶ 70-73, Exhibit 1004 at Claim 1, Exhibit 1004 at ¶¶ 0010, 0062-
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`64, 0089, 0092, and 0096). The Petition then concludes, "[d]etermining the
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`number of bits that will be supported by each transmission channel comprises
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`'assigning bits.'" Petition at 18.
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`Notably, however, this argument ignores the text of Claim 1, which requires
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`"assigning bits for transmission via said plurality of transmitting antennas based on
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`said feedback information." Exhibit 1001 at 18:11-12 (emphasis added). Nowhere
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`in Ling does the Petition identify any teaching of assigning bits for transmission
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`via a plurality of antennas. The Petition argues that Ling assigns a number of bits
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`per symbol. Neither the Petition nor the Ling reference, however, establish any
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`relationship between symbols and antennas, as would be required to demonstrate
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`that Ling discloses the elements of Claim 1.
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`This is understandable, because Ling is directed to a cellular OFDM system,
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`in which where there are a number of different subcarriers (or "subchannels"),
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`including both "spatial subchannels" and "frequency subchannels," both of which
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`are described interchangeably as "transmission channels." Exhibit 1004 at ¶ 0026.
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`In particular, each antenna can have a number of different frequency subchannels
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`(and Ling does not teach any particular correlation between a number of frequency
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`subchannels and a number of antennas). See, e.g., id. at ¶¶ 0026, 0041. Thus,
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`merely assigning symbols to frequency subchannels is indeterminate with regard to
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`any relationship between symbols and antennas. Ling, thus, teaches that (1) bits
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`can be assigned to symbols, and (2) symbols can be transmitted on frequency
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`subchannels. See id. at ¶ 0026. Ling does not teach, however, and the Petition
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`fails to argue, that there is a defined relationship between particular subchannels
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`and an antenna. Consequently, Ling does not provide any disclosure of how many
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`bits might be assigned to any particular antenna in any particular circumstance.
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`At most, in teaching that symbols are transmitted on frequency subchannels,
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`Ling teaches some general relationship between a symbol and a frequency
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`subchannel. Even under that generous interpretation, however, neither Ling nor
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`the Petition demonstrates any correlation between a frequency subchannel and an
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`antenna. Dr. Acampora states, "the multiple 'transmission channels' in Ling are
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`sent via the multiple transmitting antennas." Exhibit 1003 at ¶ 0071. Even
`
`assuming it is true that a transmission channel is sent via a transmitting antenna,
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`nothing in Ling supports Dr. Acampora's implicit attempt to equate the term
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`"transmission channel" with "transmitting antenna," or any assignment of bits for
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`transmission by an antenna, in the manner recited by Claim 1. Rath