Trials@uspto.gov
`571-272-7822
`
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` Paper No. 9
`
`Date Entered: December 13, 2017
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`ERICSSON INC., TELEFONAKTIEBOLAGET
`LM ERICSSON AND AT&T MOBILITY, LLC,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES I LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01169
`Case IPR2017-00681
`Patent 5,960,032
` ____________
`
`
`
`Before KRISTEN L. DROESCH, BRIAN J. McNAMARA, and DAVID C.
`McKONE, Administrative Patent Judges.
`
`
`McNAMARA, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and
` 37C.F.R. § 42.73
`
`
`
`571-272-7822
`
`
` Paper No. 9
`
`Date Entered: December 13, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`ERICSSON INC., TELEFONAKTIEBOLAGET
`LM ERICSSON AND AT&T MOBILITY, LLC,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES I LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01169
`Case IPR2017-00681
`Patent 5,960,032
` ____________
`
`
`
`Before KRISTEN L. DROESCH, BRIAN J. McNAMARA, and DAVID C.
`McKONE, Administrative Patent Judges.
`
`
`McNAMARA, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and
` 37C.F.R. § 42.73
`
`
`
`
`IPR2016-01169
`Patent 5,960,032
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`BACKGROUND
`On December 14, 2016, we instituted an inter partes review of claims
`1–9 of U. S. Patent No. 5,960,032 (“the ’032 patent”). Paper 9 (“Dec. to
`Inst.”). On March 16, 2017, we granted a motion to join IPR2017-00681 to
`this proceeding. Paper 18. Patent Owner filed a Patent Owner Response
`(Paper 21, “PO Resp.”), Petitioner filed a Petitioner Reply (Paper 25, “Pet.
`Reply”) and a transcript of an oral hearing held on September 11, 2017
`(Paper 37, “Tr.”) has been entered into the record.
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a). We base our decision on
`the preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).
`Having reviewed the arguments of the parties and the supporting
`evidence, we conclude that Petitioner has demonstrated by a preponderance
`of the evidence that all challenged claims are unpatentable.
`
`
`THE ’032 PATENT (EXHIBIT 1001)
`The ’032 patent concerns a method for high speed wireless data
`transmission using expanded bit durations in multiple parallel coded data
`streams. Ex. 1001, 1:1–8. The ’032 patent addresses issues arising from
`signal propagation characteristics that cause different time delays on
`multiple propagation paths to a receiver, i.e., a spread in delay times, thereby
`scattering signals and limiting maximum transmission times. Id. at 1:12–30.
`These characteristics manifest themselves as intersymbol interference (ISI)
`that creates an irreducible error floor. Id. at 1:31–33.
`One conventional approach to addressing such issues is multicarrier
`modulation in which transmitted data is divided into several interleaved bit
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`streams that are used to modulate several sub-carriers. Id. at 1:39–43. A
`training waveform can be sent through the channel so that channel
`information is fed back from the receiver to the transmitter to allocate power
`to the various sub-channels. Id. at 1:56–61. Another conventional option is
`to send sub-carrier pilots along with transmitted information to estimate
`channel parameters to cancel interference between the sub-channels. Id. at
`2:3–25.
`In contrast to the multicarrier method, the ’032 patent discloses as its
`invention a method of dividing high rate data streams into a plurality of
`parallel low rate bit streams, in which each low rate bit stream is modulated
`using direct-sequence spread spectrum (DSSS) as a single carrier. Id. at
`Abstract, 2:29–34. “By selecting the processing gain properly the total
`required bandwidth will be of the same order as the original high-rate data
`stream, thereby gaining the inherent benefit of multipath rejection without
`expanding the bandwidth of the original high-rate data stream.” Id. at
`Abstract. Preferably, each low rate bit stream is subject to a processing gain
`of the order of the number of low rate bit streams, making it possible to
`obtain high rate spread spectrum modulation within the bandwidth of the
`original high rate transmission stream while maintaining the advantages of
`DSSS such as multipath rejection. Id. at 2:65–3:4.
`
`ILLUSTRATIVE CLAIM
`Claim 1 is illustrative:
`
`
`1. A method for transmitting digital data in a wireless
`communication environment comprising:
`dividing an incoming stream of serial data bits having a first
`bit duration (Tb) into a plurality (K) of parallel data bit
`streams;
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`expanding by K times the bit duration of the incoming data so
`that the resulting symbol duration in said parallel data
`streams equals KTb;
`modulating said expanded parallel data streams with
`modulating sequences, each said modulating sequence
`having a processing gain N, having a sequence period
`equal to the symbol duration KTb of said expanded data
`streams, and having N binary chips within each period so
`that each chip has a chip duration of Tc=KTb/N, wherein
`K and N are integers and N>K; and
`summing the modulated parallel data streams for transmission.
`
`
`GROUNDS OF INSTITUTION
`In our Decision to Institute, we instituted trial on the following
`challenges to patentability:
`Claims 1–3, 7, and 9 as obvious under 35 U.S.C. § 103(a) over Sasaki
`19941 in view of Sasaki 19912;
`Claim 4 as obvious under 35 U.S.C. § 103(a) over Sasaki 1994, in
`view of Sasaki 1991, and further in view of Rice3;
`Claims 5 and 6 as obvious under 35 U.S.C. § 103(a) over Sasaki 1994,
`in view of Sasaki 1991,and further in view of Kato4; and
`
`
`1 Shigenobu Sasaki, et. al, Performance Evaluation of Parallel Combinatory
`SSMA Systems in Rayleigh Fading Channel, IEEE ISSSTA 4, IEEE THIRD
`INTERNATIONAL SYMPOSIUM ON SPREAD SPECTRUM TECHNIQUES AND
`APPLICATIONS, July 4, 1994. Ex. 1002.
`2 Shigenobu Sasaki, et. al., Performance of Combinatory Spread Spectrum
`Multiple Access Communication Systems, IEEE SYMPOSIUM ON PERSONAL,
`INDOOR, AND MOBILE RADIO COMMUNICATIONS, Sept. 23–25, 1991. Ex.
`1003.
`3 U.S. Patent No. 5,210,770 issued May 11, 1993. Ex. 1004.
`4 U.S. Patent No. 5,583,851 issued Dec. 10, 1996. Ex. 1006.
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`Claim 8 as obvious under 35 U.S.C. § 103(a) over Sasaki 1994, in
`view of Sasaki 1991, in further view of Fattouche5.
`Dec. to Inst. 31.
`
`
`CLAIM CONSTRUCTION
`In our Decision to Institute, we applied the ordinary and customary
`meaning to the terms not construed. We noted Petitioner’s comments
`concerning the term “the system performance” and “the ratio of K to N” as
`potentially lacking antecedent basis, but determined that the terms did not
`require explicit construction and that we could determine the scope and
`meaning of the claims as well as the differences between the challenged
`claims and the prior art. Dec. to Inst. 8–9. See BlackBerry Corp. v.
`MobileMedia Ideas, LLC, Case IPR2013-00036, slip op. at 19–20 (PTAB
`Mar. 7, 2014) (Paper 65) (citing In re Steele, 305 F.2d 859, 862–63 (CCPA
`1962)). In our decision, we addressed the construction of the following
`terms:
`Chip Duration
`Claim 1 of the ’032 patent recites that “each chip has a chip duration
`of Tc=KTb/N, wherein K and N are integers and N>K.” Although the term
`“chip duration” is not used in the specification, the specification states “[t]he
`chip length” is “Tc=T/N where T is the symbol interval duration.” Ex. 1001,
`4:12–15. Thus, the terms “chip length” and “chip duration” are used
`interchangeably in the ’032 patent. The ’032 patent uses other terms
`interchangeably, as well. For example, claim 1 defines N as a processing
`
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`5 U.S. Patent No. 5,555,268 issued Sep. 10, 1996. Ex. 1005.
`5
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`gain, and the specification states “[t]he integer N is the minimum period of
`the spreading sequence.” Id. at 4:11–12. In addition, as discussed further
`herein, claim 1 also recites that the “the resulting symbol duration in said
`parallel data streams equals KTb” and that the modulating sequence has “a
`sequence period equal to the symbol duration KTb of said expanded data
`streams. . . .”
`Petitioner proposed that we construe the term “chip duration” in a
`manner consistent with the construction applied by the district court in its
`Memorandum Order in Intellectual Ventures I LLC v. AT&T Mobility, Case
`12-193 (D. Del., March 24, 2015) to mean “the time duration of a chip of the
`modulating sequence, which varies inversely to N.” Pet. 30, Ex. 1007, 76.
`We adopted Petitioner’s proposed construction in the Decision to Institute.
`Dec. to Inst. 7. Patent Owner contends that, because the claim defines chip
`duration as equal to KTb/N, no construction is required. PO Resp. 5.
`According to Patent Owner, Petitioner’s construction uses the same words,
`i.e., chip duration, in a different order, introduces the limitation that the
`duration is a time duration and reads in the requirement that the duration
`varies inversely to N. Id. Although claim 1 recites an equation for
`determining the chip duration, claim 1 does not define chip duration. Patent
`Owner does not argue that the chip duration is anything other than a time
`duration. Id. In a footnote asserting that the claim construction’s
`recognition of the inverse relationship between chip duration and N is
`redundant, Patent Owner acknowledges the construction is correct. Id. at 5
`n.1.
`
`In view of the above, we are persuaded that Petitioner’s proposed
`construction is appropriate for this Decision, although we recognize the
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`mathematical equation recited in the claim defines how the value of the chip
`duration is determined.
`Sequence Period
`As noted above, claim 1 recites that “the resulting symbol duration in
`said parallel data streams equals KTb” and that each modulating sequence
`has “a sequence period equal to the symbol duration KTb of said expanded
`data streams” and the specification states that Tc=T/N, where T is the
`symbol interval duration (Ex. 1001, 4:12–15). Again citing the district
`court’s construction, Petitioner proposed construing “sequence period” to
`mean “the time duration of the modulating sequence, which remains fixed as
`N varies.” Pet. 31, Ex. 1007, 76. In our Decision to Institute, we noted that
`claim 1 explicitly recites the term “sequence period” as “equal to the symbol
`duration KTb of said expanded data streams.” Dec. to Inst. 7–8. Petitioner
`argued that the claim should be construed to limit the time duration of the
`modulating sequence to be fixed as N varies based on assertions during
`prosecution that “[i]n the system of the present invention, the sequence
`duration T is fixed so that T=KTb=NTc” and “[h]ence, in the system of the
`present invention, an increase of N is accompanied by a decrease in Tc,
`which produces bandwidth expansion.” Pet. 31 (citing Ex. 1009, 116). In
`our Decision to Institute, we determined that “for purposes of our analysis of
`Petitioner’s challenges” the term “sequence period” required no further
`construction and noted that “[t]he implications of including in the
`construction an interpretation that the sequence period remains fixed as N
`varies are unclear for purposes of our analysis of Petitioner’s challenges.”
`Dec. to Inst. 8.
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`Patent Owner’s proferred expert, Dr. Cimini, agreed with our
`conclusion that “sequence period” does not require any construction and
`stated that the term has a “clear meaning.” Ex. 1020, Transcript of
`Deposition of Dr. Leonard Cimini (“Cimini Dep. Tr.”), 135:18–136:6.
`When asked “[i]s a sequence period determined by total number of chips
`multiplied by a Chip Duration,” Dr. Cimini, replied “[t]hat’s the usual
`definition.” Ex. 1020, Cimini Dep. Tr. 136:9–13. Dr. Cimini further
`testified that “the time duration of the Modulating Sequence is the sequence
`period” (id. at 136:22–23) and, referring to his Declaration, stated “I used
`the time duration of the Modulating sequence and it is equal to N times Tc in
`the Declaration” (id. at 137:2–4).
`In view of this testimony and to “narrow the issues for determination
`by the Board, Petitioner [is] willing to accept the plain and ordinary meaning
`for ‘sequence period,’ which as shown above and acknowledged by PO’s
`expert, is taught in the art.” Pet. Reply 5. In view of the parties’ positions,
`we are persuaded that, based on the full record, we need not include in the
`construction of “sequence period” the further limitation that the sequence
`period remains fixed as N varies. Therefore, we apply the construction we
`applied in the Decision to Institute, as discussed above.
`
`ANALYSIS OF PRIOR ART CHALLENGES
`The Sasaki References
`Sasaki 1991 presents the results of a study of a “newly proposed
`parallel combinatory spread spectrum (PC-SS) communication system” that
`“can transmit almost 1.58 N information bits for a period of the pseudo-
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`noise (PN) sequence6 of length N.” Ex. 1003, 1. Figure 1 of Sasaki 1991
`shown below compares a conventional direct sequence spread spectrum
`(DS-SS) (Figure 1(a)) approach with Sasaki’s PC-SS approach (Figure 1(b)).
`
`
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`Id. Sasaki ’91 explains that in a conventional DS-SS “one PN sequence is
`assigned for one user, and transmit [sic] information by multiplying factor
`+1 or -1 for each period of PN sequence.” Id. In Sasaki’s PC-SS system, “a
`total of M orthogonal sequences are assigned for one user, and a total of r
`sequences (r<M) with multiplying factor +1 or -1 are transmitted in parallel
`[and] correspond to each state of every k data bits.” Id. Sasaki 1991
`provides an equation for determining the amount of transmitting information
`(in bits, k) per period of PN sequence. Id. 1–2. According to Sasaki 1991,
`the equation “implies that the number of information bits necessary to
`represent all combinations of sign +-1 for a selected r sequences is r, and the
`number of information bits necessary to represent all combinations of
`choosing r from M is (k-r).” Id. at 2.
`Applying this analysis, Sasaki 1991 discloses the PC-SS
`communication system model in Figure 2, reproduced below.
`
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`6 Sasaki 1991 also refers to the pseudo-noise sequence as the “spreading
`sequence.” Ex. 1003, 1.
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`Id. On the transmitter side of this model, k input bits with information rate
`Rb is converted to k parallel data with rate Rb/k. Id. “Next, we take
`particularly settled r parallel channels for attaching + or – sign to a
`combination of sequences,” represented by S = (s1, s2, s3, . . . sr), where si €
`{+ 1, -1}. Id. Remaining k-r bits are used for the representation of a
`combination of sequences by a constant weight code of length M and weight
`r. Id. Then, r transmitting sequences are selected for the orthogonal
`sequence set PN(t)=(PN1(t), PN2(t), …, PNM(t)). Id. Each selected
`sequence is multiplied by each element of S to arrive at a transmitting signal,
`such that “[o]utput signal of the transmitter appears as (r+1) level signal.” Id.
`Sasaki 1991 also states:
`In the special case, when r=1, this system is the same as the M-
`ary SS system [2]7 with multiplying factor +1 or -1, and r=M, it
`
`
`7 Citation to P.K. Enge and D.V. Sarwate :“Spread spectrum multiple access
`performance of orthogonal codes : Linear receivers”, IEEE TRANS.
`COMMUN., COM-35, 12, pp. 1309–19(Dec. 1987).
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`is simple SS parallel transmission system (i.e., code division
`multiplexing by one user).
`Id. at 2.
`Referencing Sasaki 1991, Sasaki 1994 states:
`In the PC/SS system, multiple pseudo-noise (PN) sequences are
`simultaneously transmitted out of a pre-assigned spreading
`sequence set. The PN sequences for transmission depend on the
`state of a set of data bits. Direct sequence spread spectrum system
`using binary orthogonal signaling is just a subset of the PC/SS
`system. Up to now, a brief analysis was reported for the additive
`white gaussian noise (AWGN) environment.
`
`This paper addresses the error rate performance of parallel
`combinatory spread spectrum multiple access (PC/SSMA)
`communication systems in Rayleigh fading channel.
`Ex. 1002, 1988 (references omitted). According to Sasaki 1994, in the PC/SS
`model a set of M orthogonal sequences with chip duration Tc are assigned, N
`stands for the length of the assigned sequences, an input data sequence with
`duration Td is converted to data of k parallel channels with duration
`T(=kTd=NTc), and in the mapping circuit, r transmitting PN sequences are
`chosen from M orthogonal PN sequences that are assigned to a particular user.
`Id. Sasaki 1994 also notes that the PC/SS system transmits k bits of data
`during a PN period. Id. at 200.
`Claim 1
`Petitioner divides the features of claim 1 of the ’032 patent into the
`following four Aspects: (1) dividing the incoming stream of serial data bits
`into K parallel data streams; (2) expanding the bit duration Tb of the
`
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`8 Petitioner cites the page numbers of Sasaki 1994 as published, rather than
`the page numbers of Ex. 1002. For consistency and clarity, we use the page
`numbers used by Petitioner.
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`incoming data to KTb; (3) modulating the expanded parallel data streams
`with modulating sequences (each modulating sequence having a processing
`gain N), a sequence period equal to symbol duration KTb of the expanded
`data streams, and having N binary chips within each period so that each chip
`has a duration of Tc=KTb/N, wherein N and K are integers, with N>K; and
`(4) summing the transmission. Pet. 4–6, 10–11. Petitioner contends that
`Patent Owner acknowledged during prosecution of the ’032 patent that
`aspects 1, 2 and 4 were known in the art and are not in dispute by the parties.
`Tr. 5: 4–9, 11:16–18.
`Petitioner treats claim Aspect (1) as corresponding to claim element
`1.0 “A method for transmitting digital data in a wireless communication
`environment” (Pet. 33–35) and claim element 1.1 “dividing an incoming
`stream of serial data bits having a first bit duration (Tb) into a plurality (K)
`of parallel data bit streams” (id. at 35–40). We agree with Petitioner that the
`disclosure of a Rayleigh fading channel in Sasaki 1994 characterizes a
`wireless communications environment, that k in Sasaki 1994 corresponds to
`K in the ’032 patent, that Td (input data sequence duration) in Sasaki 1994
`corresponds to Tb in the ’032 patent, as both terms are used to define a
`duration T, and that Sasaki 1994 discloses that k data bits are converted to k
`parallel streams. Pet. 33–36, Ex. 1002, 1. We further agree with Petitioner
`that claims elements 1.1 and 1.2 are disclosed in Sasaki 1991. Pet. 37 (see,
`Petitioner’s annotated version of the transmitter portion of Figure 2 of Sasaki
`1991).
`Petitioner treats claim aspect (2) as corresponding to claim element
`1.2 “expanding by K times the bit duration of the incoming data so that the
`resulting symbol duration in said parallel data streams equals KTb” (id. at
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`38–40). Petitioner notes that Sasaki 1994 discloses that after serial to
`parallel conversion, the bit duration is expanded by k times, thus teaching
`the limitation that the resulting symbol duration is kTd (corresponding to
`KTb in the ’032 patent). Pet. 39. Sasaki 1994 also states that kTd equals
`NTc, where N stands for the length of the assigned sequence and Tc is chip
`duration. Ex. 1002, 198. Thus, we are persuaded that Sasaki 1994 discloses
`claim element 1.2
`Petitioner identifies the following claim elements as corresponding to
`Aspect 3: claim element 1.3, “modulating said expanded parallel data
`streams with modulating sequences” (Pet. 40–45); claim element 1.4: “each
`said modulating sequence having a processing gain N” (id. at 45– 46); claim
`element 1.4a “[each said modulating sequence . . .] having a sequence period
`equal to the symbol duration KTb of said expanded data streams” (id. at 46–
`47), claim element 1.4b: “[each said modulating sequence . . .] having N
`binary chips within each period so that each chip has a chip duration of
`Tc =KTb /N” (id. at 47–48); and claim element 1.5: “wherein K and N are
`integers and N>K” (id. at 48–50). As discussed below, Patent Owner
`explicitly disputes only Petitioner’s contention that the combination of
`Sasaki 1994 and Sasaki 1991 discloses the sequence period recited in claim
`element 1.4(a) and whether the Petition addresses the provision in element
`(1.5) that N>K when r=M.
`As to claim element 1.3 (modulating said expanded parallel data
`streams with modulating sequences), Petitioner notes that M represents the
`number of modulating sequences assigned to a particular user and r
`represents the number of PN sequences chosen for transmission from the M
`sequences available. Pet. 40, Tr. 8:9–21. Petitioner cites Sasaki 1994 as
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`disclosing mapping circuits in which r transmitting PN sequences are chosen
`from M orthogonal sequences, but acknowledges that Sasaki 1994 does not
`disclose what the value of r should be. Tr. 12:9–15. Petitioner cites Sasaki
`1991 as disclosing the same PCSS system in which r=M. Id. at 12:16–23,
`14:24–26. Petitioner notes that, although r (the number of PN sequences)
`may be smaller than M, Sasaki 1991 teaches that r may also equal M, in
`which case r will correspond to the number of k of parallel streams. Pet. 40–
`41. Thus, when r=M all available sequences are transmitted. Id. at 41.
`Petitioner argues that in the context of whether a system is combinatorial,
`selecting all M available sequences (r=M) is no different from selecting all
`parameters of a group of parameters, which Patent Owner’s expert, Dr.
`Cimini, acknowledged is also a proper mathematical combination. Tr.
`14:11–23.
`As to claim element 1.4 (each said modulating sequence having a
`processing gain N), Petitioner contends that Sasaki 1994 discloses that each
`modulating sequence has processing gain N. Noting that each spreading PN
`sequence has N distinct chips (“elements” in Sasaki 1994), Petitioner cites
`the disclosure in Sasaki 1994 that “N stands for the length of the assigned
`sequence,” resulting in a processing gain of N where the data bits are each
`modulated with N-length sequences. Pet. 45–46 (citing Ex. 1002, 198;
`Ex. 1012, ¶¶ 63–64).
`As to claim element 1.4(a) ([each said modulating sequence . . .]
`having a sequence period equal to the symbol duration KTb of said expanded
`data streams), Petitioner argues that in Sasaki 1994, N times chip duration
`Tc (i.e., NTc) corresponds to the total duration of the modulating sequence
`after conversion and expansion. Id. at 46 (citing Ex. 1012, Declaration of
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`Dr. Zygmunt Haas, (“Haas Decl.) claim chart p. 679). Petitioner cites the
`disclosure in Sasaki 1994 that
`
`The data in (2) is converted to the data of k parallel channels
`with duration T(=kTd=NTc)
`Pet. 46, Ex. 1002, 198. In the above sentence “(2)” refers to the input data
`sequence with duration Td. Ex. 1002, 198. Petitioner manipulates this
`equation to support its contention that, consistent with Patent Owner’s
`representations during prosecution of the ’032 patent, the sequence period
`will remain fixed even as N varies. Pet. 46–47. As we addressed in our
`claim construction discussion, notwithstanding Patent Owner’s statements
`during prosecution, we are not persuaded that it is necessary for us to apply
`this limitation to the construction of the claimed sequence period to resolve
`the issues before us. In addition, Petitioner acknowledges that we need not
`construe the sequence period to remain constant as N varies in order to
`resolve the issues in this proceeding. Pet. Reply 4–5.
`Patent Owner contends that Petitioner has not demonstrated the
`combination of Sasaki 1991 and Sasaki 1994 teaches or suggests the claimed
`“sequence period.” PO Resp. 8. Patent Owner contends that, whether we
`apply the ordinary meaning of the term “sequence period,” or Petitioner’s
`proposed construction, Petitioner has not shown that the combination of
`Sasaki 1991 and Sasaki 1994 discloses the claimed “sequence period equal
`to the symbol duration KTd of said expanded data streams.” PO Resp. 9.
`Patent Owner’s position appears to be that if we agree with the district court
`that prosecution history disclaimer applies, Petitioner has not established
`
`
`9 We cite to the page of Exhibit 1012, which in this case corresponds to p. 64
`of the Hass Declaration.
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`that the Sasaki references disclose the claimed “sequence period” and that if
`we do not agree that prosecution history disclaimer applies, Petitioner
`simply has not addressed the limitation. Tr. 39, 9–25. According to Patent
`Owner, Petitioner’s only argument construes “sequence period” as “the time
`duration of the modulating sequence, which remains fixed as N varies,” and
`under Petitioner’s construction, the sequence period is independent of the
`length N of the modulating sequence. PO Resp. 9.
`Patent Owner argues that Petitioner cites no evidence in Sasaki 1991
`or Sasaki 1994 that explicitly states the alleged sequence period T is
`independent of length N of the modulation sequence, but instead Petitioner
`reads into Sasaki 1994’s equation kTd=NTc a non-existent limitation that
`kTd is a constant value. PO Resp. 10. Patent Owner then argues that this
`relationship could be preserved in ways other than holding kTd constant. Id.
`at 10–13. As discussed above, notwithstanding Patent Owner’s statements
`during prosecution, for purposes of this proceeding, we do not read into
`claim 1 the limitation that the sequence period remains fixed as N varies.
`We are persuaded, however, that Petitioner has shown the “sequence
`period” limitation is disclosed in the combination of the Sasaki references.
`As we addressed in our earlier discussion of the construction of “sequence
`period,” Patent Owner’s expert, Dr. Cimini, agreed that under the “usual
`definition,” the term “sequence period” “is determined by total number of
`chips multiplied by a Chip Duration,” (Ex. 1020, Cimini Dep. Tr., 135:18–
`136:14), that “the time duration of the Modulating Sequence is the sequence
`period” (id. at 136:22–23), and that in his Declaration he “used the time
`duration of the Modulating sequence and it is equal to N times Tc in the
`Declaration” (id. at 137:2–4). Petitioner points out that Sasaki 1994 also
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`discloses the sequence period T(kTd=NTc). Pet. 46. In view of Dr. Cimini’s
`testimony and the relationships disclosed in Sasaki 1994, we are persuaded
`that Sasaki 1994 discloses the claimed sequence period.
`As to claim element 1.4(b) (“[each said modulating sequence . . .]
`having N binary chips within each period so that each chip has a chip
`duration of Tc =KTb /N”), Petitioner cites Sasaki 1994 as disclosing
`T=kTd=NTc and applying this relationship and rearranging the equation,
`Tc=kTd/N, indicating an inverse relationship between N and Tc. Pet. 48
`(citing Ex. 1012, Haas Decl. claim chart, p. 69 [p. 66 of declaration]). As
`previously discussed, Petitioner notes that Td in Sasaki corresponds to Tb in
`the ’032 patent. Pet. 48.
`As to claim element 1.5 (“wherein K and N are integers and N>K”),
`citing Figures 2, 3, 4, Petitioner notes that Sasaki 1994 teaches that k (the
`claimed K) and N (the claimed N) are integers. Pet. 49–50. Noting that
`Sasaki 1994 discloses the spreading factor is expressed as N/k, and that
`Patent Owner acknowledged this relationship during prosecution of the ’032
`patent, Petitioner states that a person of ordinary skill would have
`recognized in each stream where the bits’ duration have been expanded, N
`must be greater than K. Id. at 50.
`Patent Owner contends that the analysis in the Petition concerning
`N>K concerns the case when r<M, but that the Petition failed to establish
`that N>K when r=M. PO Resp. 26–30; Tr. 55:33–56:13. Patent Owner
`contends that Petitioner “never explains how modifying Sasaki 1994, such
`that parameter M equals the parameters r and k, would also keep the values
`of parameters k and N as the same integers N>k shown in the configuration
`in the figures above [Figure 1 of Sasaki 1994, as annotated by Petitioner, and
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`Figure 2 of Sasaki 1991].” PO Resp. 29. According to Patent Owner,
`Petitioner’s efforts to address that issue in the Petitioner Reply are untimely.
`Tr. 56:14–57:1.
`Patent Owner’s argument concerning claim element 1.5 (N>k) is
`grounded in its theory that in the special case where r=k and there are no
`data streams in the lower branch of Figure 2, a separate and distinct
`modified system is created. PO Resp. 29. As discussed further below in our
`discussion of issues concerning the motivation to combine the references, we
`do not find this argument persuasive. Citing the Patent Owner Response at
`page 24, Petitioner argues that it is undisputed that in Sasaki 1994 N>k. Pet.
`Reply. 16. Petitioner cites the Petition at pages 22–24, and 33–35 as
`evidence that the Petition demonstrated throughout that the PC/SS system
`common to Sasaki 1991 and Sasaki 1994, in the operation mode r=M,
`teaches all the limitations of claim 1 as a whole. Id. Petitioner emphasizes
`that its expert, Dr. Haas, explained in his declaration filed with the Petition
`that a person or ordinary skill would have been motivated to maintain N>k
`when r=M to maintain a spreading factor greater than one for the PC/SS
`system in Sasaki 1994. Id. at 16–17 (citing Ex. 1012, Haas Decl. claim
`chart, pages 69–70 [Declaration pages 66–67]). Petitioner cites the Reply
`Declaration of Dr. Hass to emphasize that the teachings of Sasaki 1994
`regarding N>k do not change when the PC/SS mode of operation is set to
`r=M. Id. at 17 (citing Ex. 1019, Reply Declaration of Dr. Zygmunt Haas
`(“Haas Reply Decl.”) ¶¶ 36–43). In his Reply Declaration, Dr. Haas
`references the declaration filed with the Petition and states:
`If r=M=12, and N=84, then as I laid out in my first declaration, r
`also equals k, and therefore k=12. In this situation, N would still
`be greater than k and the system operates with all M sequences
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`selected as r. In this situation, 12 bits (k=r=12) would be
`transmitted per period of PN sequences per Sasaki 1991’s
`equation (1).
`A POSITA would have recognized that the choice of N in either
`Sasaki reference is not fundamentally restricted by the choice of
`k, as long as the stated equality of kTd=NTc (Sasaki 1994) holds.
`This is because the choice of N is generally independent of the
`choice of r, given a particular value for M. The main effect of
`choosing a larger N is that it increases the system bandwidth
`relative to k. This is why Sasaki 1994 defined Fs as the “apparent
`spreading factor” given by N/k.
`Haas Reply Decl. ¶¶ 39–40. In consideration of the above, we are
`persuaded that Petitioner has demonstrated that the combination of Sasaki
`1994 and Sasaki 1991 discloses claim element 1.5.
`Petitioner treats claim aspect (4) as corresponding to claim element
`1.6: “summing the modulated parallel data streams for transmission” (Pet.
`50–53). Petitioner provides an annotated version of Figure 2 of Sasaki 1991
`and cites equation (8) of Sasaki 1994 as representing the waveform of the ith
`modulating sequence modulating the ith data bit, noting that this repeats for
`each data bit from the first to the rth data bit, which is also the kth data bit
`when k=r=M. Pet. 50–51. Petitioner further notes that Figure 2 of Sasaki
`1991 represents the claimed summation and that the summed signal is
`combined with a carrier for transmission. Id. at 51–52. We are persuaded
`that Sasaki 1994 and Sasaki 1994 disclose claim element 1.6.
`In consideration of the above, we are persuaded that Petitioner has
`demonstrated that the combination of Sasaki 1994 and Sasaki 1991 discloses
`all the limitations of claim 1.
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`Motivation to combine
`Patent Owner contends that Petitioner has not
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