IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`Kari Pajukoski et al.
`In re Patent of:
`8,121,082 Attorney Docket No.: 35548-0036IP1
`U.S. Patent No.:
`February 21, 2012
`
`Issue Date:
`Appl. Serial No.: 12/322,544
`
`Filing Date:
`February 3, 2009
`
`Title:
`DTX DETECTION WHEN ACK/NACK IS TRANSMIT-
`TED WITH SCHEDULING REQUEST
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`PETITION FOR INTER PARTES REVIEW OF UNITED STATES PATENT
`NO. 8,121,082 PURSUANT TO 35 U.S.C. §§ 311–319, 37 C.F.R. § 42
`
`
`
`

`

`Attorney Docket No. 35548-0036IP1
`IPR of U.S. Patent No. 8,121,082
`TABLE OF CONTENTS
`
`EXHIBITS ................................................................................................................ ii
`I.
`REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104 ............................ 1
`A. Grounds for Standing ................................................................................ 1
`B. Challenge and Relief Requested ............................................................... 1
`C. Claim Construction ................................................................................. 11
`SUMMARY OF THE ’082 PATENT ........................................................... 15
`II.
`III. APPLICATION OF PRIOR ART TO CHALLENGED CLAIMS .............. 15
`A. Grounds 1A-B: KwakPat883 and LGE each separately renders obvious
`claims 10, 12-13, and 17 ......................................................................... 15
`B. Ground 2: Bachl anticipates claims 10, 12, and 17 ................................ 58
`C. Grounds 3A-4: KwakPat883 or LGE or Bachl in view of Ishii renders
`obvious claims 1, 3, 5, 7, 9, 11, 15-16, and 18 (KwakPat883), claims 1,
`3, 5, 11, 15-16, and 18 (LGE), or claims 1-2, 5, 7, 9, 11, 15-16, and 18
`(Bachl) ..................................................................................................... 73
`1. KwakPat883 or LGE or Bachl in view of Ishii renders obvious
`claims 1, 11, 15-16, and 18 ........................................................... 74
`Bachl in view of Ishii renders obvious claim 2 ............................. 80
`2.
`3. KwakPat883 or LGE in view of Ishii renders obvious claim 3 .... 83
`4. KwakPat883 or LGE or Bachl in view of Ishii renders obvious
`claim 5 ........................................................................................... 83
`5. KwakPat883 or Bachl in view of Ishii renders obvious claims 7
`and 9 .............................................................................................. 83
`D. Grounds 5A-5B: KwakPat883 or LGE in view of Ishii and Bachl
`renders obvious claim 2 (KwakPat883) or claims 2, 7, and 9 (LGE) .... 89
`E. Ground 6A-6B: Bachl in view of Ishii and KwakPat883 or LGE renders
`obvious claims 3 and 13 .......................................................................... 93
`IV. CONCLUSION .............................................................................................. 97
`V. MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1) ......................... 98
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) .............................. 98
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2) ....................................... 98
`C. Lead And Back-Up Counsel And Service Information .......................... 98
`
`
`
`
`
`i
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`

`

`Attorney Docket No. 35548-0036IP1
`IPR of U.S. Patent No. 8,121,082
`
`EXHIBITS
`
`HUAWEI-1001 U.S. Patent No. 8,121,082 to Pajukoski, et al. (“the ’082 Pa-
`tent”)
`HUAWEI-1002 Excerpts from the Prosecution History of the ’082 Patent (“the
`Prosecution History”)
`HUAWEI-1003 Declaration of Dr. Bijan Jabbari
`HUAWEI-1004 Curriculum Vitae of Dr. Bijan Jabbari
`HUAWEI-1005 U.S. Patent No. 7,852,883 to Kwak et al. (“KwakPat883”)
`HUAWEI-1006 Prosecution History of KwakPat883
`HUAWEI-1007 Prosecution History of Provisional Application No. 60/954,812
`of KwakPat883 filed on Aug. 8, 2007
`HUAWEI-1008 Certified English Translation of Provisional Application No.
`60/954,812 of KwakPat883 (“KwakProv812”)
`HUAWEI-1009 Prosecution History of Provisional Application No. 60/979,860
`of KwakPat883 filed on Oct. 14, 2007
`HUAWEI-1010 Certified English Translation of Provisional Application No.
`60/979,860 of KwakPat883 (“KwakProv860”)
`HUAWEI-1011 U.S. Patent Application Publication Number US 2005/0250540
`to Ishii et al. (“Ishii”)
`HUAWEI-1012 U.S. Patent Application Publication Number US 2008/0316959
`to Bachl et al. (“Bachl”)
`3GPP TSG-RAN WG1 Meeting #50, doc R1-073485, Proposed
`Scheduling Request (SR) structure and multiplexing with
`PUCCH (August 20-24, 2007), available as “R1-073485.zip” at
`http://www.3gpp.org/ftp/tsg_ran/WG1_RL1/TSGR1_50/Docs/
`(uploaded 8/15/2007 at 2:07 PM) (“LGE”)
`HUAWEI-1014 Declaration of Xiaoan Fan (“Fan_Decl.”)
`HUAWEI-1015 Exhibit No. 1004 of IPR2017-00591
`HUAWEI-1016 U.S. Patent No. 8,094, 554 to Gholmieh et al. (“Gholmieh”)
`HUAWEI-1017 U.S. Patent No. 7,881,398 to Mujtaba et al. (“Mujtaba”)
`
`HUAWEI-1013
`
`ii
`
`

`

`HUAWEI-1019
`
`Attorney Docket No. 35548-0036IP1
`IPR of U.S. Patent No. 8,121,082
`HUAWEI-1018 Frequently Asked Questions, available at http://web.ar-
`chive.org/web/20070630180057/http://www.3gpp.org:80/faq/fa
`q_2005_2.htm (“3GPP FAQ”)
`3GPP Delegates Corner, available at http://web.ar-
`chive.org/web/20070702235036/http://www.3gpp.org:80/dele-
`gates/delegates.htm (“3GPP Delegates Corner”)
`3GPP Webpage, available at http://web.ar-
`chive.org/web/20070703092005/http://www.3gpp.org:80/About
`/about.htm (“About 3GPP”)
`HUAWEI-1021 Affidavit of Office Manager at the Internet Archive
`HUAWEI-1022 Claim Construction Memorandum and Order, from Case No.
`2:16-cv-0756-JRG-RSP E.D. Tex, May 24, 2017 (Markman Or-
`der).
`
`HUAWEI-1020
`
`iii
`
`
`
`
`
`

`

`Attorney Docket No. 35548-0036IP1
`IPR of U.S. Patent No. 8,121,082
`Huawei Technologies Co. Ltd. (“Petitioner”) petitions for Inter Partes Re-
`
`view (“IPR”) of claims 1-3, 5, 7, 9-13, and 15-18 (“Challenged Claims”) of U.S.
`
`Patent No. 8,121,082 (“’082 Patent”).
`
`I.
`
`REQUIREMENTS FOR IPR
`
`A. Grounds for Standing
`Petitioner certifies that the ’082 Patent is available for IPR. This petition is
`
`being filed within one year of service of a complaint against Petitioner. Petitioner
`
`is not barred or estopped from requesting this review.
`
`B. Challenge and Relief Requested
`Petitioner requests IPR on the grounds in the table below. These claims are
`
`unpatentable as provided below and in HUAWEI-1003, Declaration of Dr. Bijan
`
`Jabbari.
`
`
`
`
`
`
`
`1
`
`

`

`Ground
`
`Claims
`
`Basis
`
`Attorney Docket No. 35548-0036IP1
`IPR of U.S. Patent No. 8,121,082
`
`1A
`
`1B
`
`2
`
`3A
`
`3B
`
`4
`
`5A
`
`5B
`
`6A
`
`6B
`
`
`
`10, 12-13, 17
`
`10, 12-13, 17
`
`10, 12, 17
`
`§103: KwakPat883
`
`§103: LGE
`
`§102: Bachl
`
`1, 3, 5, 7, 9, 11, 15-16,
`18
`
`§103: KwakPat883, Ishii
`
`1, 3, 5, 11, 15-16, 18
`
`§103: LGE, Ishii
`
`1-2, 5, 7, 9, 11, 15-16,
`18
`
`§103: Bachl, Ishii
`
`2
`
`2, 7, 9
`
`3, 13
`
`3, 13
`
`§103: KwakPat883, Ishii, Bachl
`
`§103: LGE, Ishii, Bachl
`
`§103: Bachl, Ishii, KwakPat883
`
`§103: Bachl, Ishii, LGE
`
`Each reference qualifies as prior art.
`
`
`KwakPat883 (§ 102(e))
`KwakPat883 issued from U.S. 12/594,159 as a National Phase of
`
`PCT/KR2008/004590, which was published in English, designated the U.S., and
`
`was filed 08/07/2008 before the 02/03/2009 “Filing Date” of the ’082 Patent. U.S.
`
`12/594,159 of KwakPat883 shares identical disclosure to PCT/KR2008/004590.
`
`
`
`2
`
`

`

`Attorney Docket No. 35548-0036IP1
`IPR of U.S. Patent No. 8,121,082
`Thus, KwakPat883 qualifies as prior art to the ’082 Patent as of its PCT filing date,
`
`unless Patent Owner is able to prove that the ’082 Patent is entitled to its provi-
`
`sional filing date of 02/05/2008 (“Provisional Date”).1
`
`KwakPat883 also claims priority to U.S. 60/954,812 (“KwakProv812”),
`
`which was filed 08/08/2007, before the Provisional Date. KwakProv812 was ex-
`
`pressly incorporated by reference into KwakPat883. HUAWEI-1005, 1:5-12. Pur-
`
`suant to 37 C.F.R. 1.78(a)(5), an English-language translation and a statement of
`
`translation accuracy was filed in KwakProv812. HUAWEI-1007, 47.
`
`As discussed below, claim 1 of KwakPat883 is fully supported by
`
`KwakProv812. HUAWEI-1003, [51].
`
`KwakProv812 describes a method of transmitting uplink (UL) control sig-
`
`nals (e.g., “a transmission method2 which can support both the control signal and
`
`the SR,” HUAWEI-1008, 2:3-4. FIG.2 shows control signals are transmitted by a
`
`user equipment (UE) on “UL Control Channel,” HUAWEI-1008, 3:17-20) in a
`
`wireless communication system (e.g., “a broadband communication system,...to
`
`maximize efficiency in limited wireless resources.” HUAWEI-1008, 2:22-23);
`
`
`1 If Patent Owner is unable to prove that the ’082 Patent is entitled to the Provi-
`
`sional Date, the analysis regarding KwakProv812 in Section III is unnecessary.
`
`2 Bolded text represents emphases added by Petitioner.
`
`
`
`3
`
`

`

`HUAWEI-1003, [52]-[53].
`
`Attorney Docket No. 35548-0036IP1
`IPR of U.S. Patent No. 8,121,082
`
`
`
`KwakProv812, FIG.2 (annotated)
`
`FIG. 2 shows transmitting control signals using at least one subframe com-
`
`prising two slots. FIG. 3 “shows a control channel structure [of one slot in one
`
`sub-frame] for transmitting coherent ACK/NACK transmission” in LTE.
`
`HUAWEI-1008, 4:3-5, FIG.3, Title; HUAWEI-1003, [54].
`
`FIG. 3 shows that each slot includes a plurality of (i.e.,7) symbols because
`
`KwakProv812 discloses “transmitting an SR signal in a 2D spreading channel
`
`structure…like an LTE ACK/NACK channel” (HUAWEI-1008, 5:19-20), “the
`
`SR channel is configured by respectively allocating the orthogonal codes having a
`
`length of 4 to OFDM symbols for carrying SR information and the orthogonal
`
`codes having a length of 3 [symbols] to a section used as RS,” (HUAWEI-1008,
`
`10:1-5); HUAWEI-1003, [55]. In KwakProv812, “[t]he above three code allocat-
`
`
`
`4
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`

`

`Attorney Docket No. 35548-0036IP1
`IPR of U.S. Patent No. 8,121,082
`ing methods can be applied to a control channel structure employing a code hop-
`
`ping method by extending to allocation of a spreading hopping pattern defined per
`
`one or more symbols.” HUAWEI-1008, 7:11-13; HUAWEI-1003, [55]-[56].
`
`KwakProv812, FIG.3 (annotated)
`
`
`
`KwakProv812 discloses the wireless communication system configured to
`
`transmit a scheduling request (SR) via a preassigned SR physical uplink control
`
`channel (PUCCH) resource and to transmit a ACK/NACK via a preassigned
`
`ACK/NACK physical uplink control channel (PUCCH) resource (e.g., “configur-
`
`ing an SR channel and an ACK/NACK channel through the code allocation,”
`
`HUAWEI-1008, 6:13-14; “both the SR and ACK/NACK can be transmitted
`
`through the previously allocated SR channel.” HUAWEI-1008, 13:16-18);
`
`
`
`5
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`

`

`Attorney Docket No. 35548-0036IP1
`IPR of U.S. Patent No. 8,121,082
`HUAWEI-1003, [57]-[62]. The SR channel and ACK/NACK channel are preas-
`
`signed uplink control channel because “previously-allocated control channels
`
`have been utilized to transmit the control signals. Id. Specifically, a transmission
`
`structure for an uplink control signal in long term evolution (LTE)” is described.
`
`HUAWEI-1008, 3:2-4. FIG. 3 shows “Transmission structure of uplink control
`
`signal for coherent ACK/NACK in LTE.” HUAWEI-1003, [58].
`
`The SR channel and ACK/NACK channel are physical uplink control chan-
`
`nel (PUCCH) resources because, as admitted by the ’082 Patent, it had been known
`
`that in LTE, “when referring to the SR, TS 36.21x series utilizes the term PUCCH
`
`Format 1” and, “when referring to ACK/NACK as a general term, PUCCH For-
`
`mats 1a/1b are meant.” HUAWEI-1001, 2:65-3:1. Here, KwakProv812 discloses
`
`that, “[i]f there is no data to be transmitted along with the control signal, some
`
`of a system band [that] “is distinguished and allocated by FDM and the user
`
`equipment for transmitting only the control channel transmits the [uplink] “con-
`
`trol signal by []modulating the control signal to this allocated region in the form
`
`of SCFDM (refer to FIG.2).” HUAWEI-1008, 3:19-20. Indeed, FIG. 2 shows the
`
`“UL Control Channel,” i.e., “this allocated region” for “L1/L2 control signal,” is
`
`distinguished from the data region denoted as the physical uplink shared channel
`
`(“PUSCH”), further substantiating KwakProv812’s disclosure of a physical uplink
`
`control channel (PUCCH). Id.; HUAWEI-1003, [59]-[62].
`
`
`
`6
`
`

`

`Attorney Docket No. 35548-0036IP1
`IPR of U.S. Patent No. 8,121,082
`KwakProv812 discloses determining whether or not an ACK/NACK and a
`
`SR are to be transmitted in a subframe (e.g., “[i]f the transmission of the
`
`ACK/NACK signal is required at the SR transmission like (2) of FIG.7,
`
`HUAWEI-1008, 13:16-17); and transmitting the ACK/NACK and the SR in the
`
`subframe via the preassigned SR PUCCH resource if the step of determining indi-
`
`cates that the ACK/NACK and the SR are to be transmitted in the subframe: (e.g.,
`
`“both the SR and ACK/NACK can be transmitted through the previously allo-
`
`cated SR channel.” HUAWEI-1008, 13:17-18). The ACK/NACK and SR are to
`
`be transmitted in the subframe because the SR channel is configured for “trans-
`
`mission [of SR] simultaneous with a certain control signal such as the
`
`ACK/NACK signal,” HUAWEI-1008, 6:17-20. Indeed, as shown in (2) of FIG.7,
`
`both the ACK/NACK signal and SR are transmitted in the SR channel. “[L]ike an
`
`LTE ACK/NACK channel” (as shown in (1) in FIG.7 and in FIG.3), the SR chan-
`
`nel having 7 symbols is “of one slot” “in the subframe.” HUAWEI-1008, 5:4, 6-7,
`
`4:3-6; FIGS.2-4; HUAWEI-1003, [63]-[66].
`
`
`
`7
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`

`

`Attorney Docket No. 35548-0036IP1
`IPR of U.S. Patent No. 8,121,082
`
`KwakProv812, FIG.7 (annotated)
`
`
`
`Thus, claim 1 (and similar claim 8) of KwakPat883 is supported by
`
`KwakProv812. HUAWEI-1003, [67]-[69]. Accordingly, teachings in Kwak-
`
`Pat883 supported by KwakProv812 are available as prior art as of KwakProv812’s
`
`filing date. Cisco v. Capella, IPR2014-01276, Paper 40, 22 (P.T.A.B. 2016)(citing
`
`Dynamic Drinkware v. National Graphics, 800 F.3d 1375 (Fed. Cir. 2015)). Such
`
`teachings are identified throughout the Petition by parallel citations to exemplary
`
`corresponding disclosure in KwakProv812. Additionally, as KwakProv812 is ex-
`
`pressly incorporated by reference into KwakPat883 (HUAWEI-1005,1:5-12), any
`
`disclosure in KwakProv812 is necessarily available in KwakPat883 by virtue of the
`
`incorporation. Citations to disclosure within KwakProv812 are intended to repre-
`
`sent citations to corresponding incorporated subject matter within KwakPat883.
`
`8
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`
`
`
`
`

`

`Attorney Docket No. 35548-0036IP1
`IPR of U.S. Patent No. 8,121,082
`
`
`Ishii (§ 102(b))
`Ishii was published 11/10/2005.
`
`
`Bachl (§ 102(e)/102(a))
`Bachl is a U.S. Publication that was filed 06/19/2007, before the Filing and
`
`Provisional Dates, and was published December 25, 2008.
`
`
`LGE (§ 102(a)/102(b))
`3GPP develops technical specifications for its Organizational Partners that
`
`in-turn adopt those specifications in regional standards. HUAWEI-1014, ¶¶9-17.
`
`3GPP’s development of specifications is an ongoing, collaborative effort involving
`
`hundreds of engineers from many companies. Id. Members of various 3GPP
`
`working groups submit written contributions and discussion documents before,
`
`during, and after scheduled working group meetings. 3GPP stores these docu-
`
`ments electronically and retains them on 3GPP’s public FTP server indefinitely.
`
`Id.
`
`LGE is a 3GPP contribution that was publically available by August 20-24,
`
`2007, and as early as August 15, 2007. HUAWEI-1014, ¶¶18-43. LGE was pub-
`
`lished prior to the Provisional Date. HUAWEI-1013, 1.3
`
`
`3 If Patent Owner is unable to prove that the ’082 Patent is entitled to the Provi-
`
`sional Date, LGE is 102(b) prior art.
`
`
`
`9
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`

`

`Attorney Docket No. 35548-0036IP1
`IPR of U.S. Patent No. 8,121,082
`First, copies of LGE were disseminated to interested members of the public
`
`at 3GPP TSG RAN WG1 Meeting #50, which was held on August 20-24, 2007, in
`
`Athens, Greece. HUAWEI-1014, ¶¶21-23. RAN WG1 Meeting #50 was attended
`
`by 205 individuals representing more than 70 different organizations. Id. Accord-
`
`ingly, LGE was publicly accessible by August 20-24, 2007, and qualifies as a prior
`
`art printed publication. LG Elecs. v. Core Wireless Licensing S.A.R.L., IPR2015-
`
`01988, Paper 31, 16–26 (PTAB 2017).
`
`Second, copies of LGE were disseminated to interested members of the pub-
`
`lic who subscribed to RAN WG1’s public e-mail reflector list
`
`(3GPP_TSG_RAN_WG1@LIST.ETSI.ORG) or who navigated to RAN WG1 e-
`
`mail reflector’s online archive on August 15, 2007. HUAWEI-1014, ¶¶24-29.
`
`Third, copies of LGE were disseminated to interested members of the public
`
`on 3GPP’s public FTP server on August 15, 2007 at 2:07 PM. HUAWEI-1014,
`
`¶¶30-43. Specifically, any member of the public could have freely navigated
`
`3GPP’s public FTP directory and used the available index for RAN WG1 Meeting
`
`#50 to easily search the RAN WG1 Meeting #50 contributions, and thus access
`
`LGE. Id.; HUAWEI-1022; HUAWEI-1023.
`
`Additionally, Patent Owner previously acknowledged that 3GPP contribu-
`
`tions are printed publications that are freely available on 3GPP’s public FTP
`
`server. HUAWEI-1015, [20]-[21].
`
`
`
`10
`
`

`

`C. Claim Construction
`
`Attorney Docket No. 35548-0036IP1
`IPR of U.S. Patent No. 8,121,082
`
`A claim subject to IPR is given its “broadest reasonable construction in light
`
`of the specification.” 37 C.F.R. § 42.100(b). For purposes of this proceeding only,
`
`Petitioner construes the following terms.4 All remaining terms should be given
`
`their broadest reasonable ordinary meaning.
`
`In co-pending litigation, the District Court issued a Markman Order address-
`
`ing terms of the ’082 Patent. HUAWEI-1022. The Markman order construed the
`
`means-plus-function limitations of claim 10 more narrowly than the constructions
`
`below. HUAWEI-1022, 11-23. The District Court’s constructions, however, were
`
`rendered under a different standard (ordinary and customary meaning) than the
`
`standard used in this proceeding (BRI). Accordingly, for reasons discussed below,
`
`broader constructions are appropriate for this proceeding under BRI. The non-
`
`means constructions in the Markman Order are consistent with this Petition.
`
`HUAWEI-1022, 23-34.
`
`
`4 The standard for district court (“ordinary and customary meaning”) is different
`
`than the broadest reasonable construction/interpretation (“BRI”) standard applied
`
`in IPR. Due to these differences, disclosure identified as teaching terms of the
`
`’082 Patent is not an admission that the terms are met by any disclosure for in-
`
`fringement purposes.
`
`
`
`11
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`

`

`Attorney Docket No. 35548-0036IP1
`IPR of U.S. Patent No. 8,121,082
`“means for generating a message” (Claim 10)
`
`The claim term “means for generating a message” in claim 10 is governed
`
`by 35 U.S.C. §112 ¶6. Specifically, the term recites “means for,” which creates a
`
`presumption that the term is governed by §112 ¶6. Williamson v. Citrix Online,
`
`LLC, 2015 WL 3687459, *5-6 (Fed. Cir. 2015)(en banc). No other limitation in
`
`claim 10 informs a person of ordinary skill in the art as of the Provisional Date
`
`(“POSITA”) as to the structure of the limitation. HUAWEI-1003, [41]-[43]. In-
`
`deed, claim 10 does not recite any structure for performing the function of generat-
`
`ing a message that would rebut the presumption created by use of the term
`
`“means.” Id. Accordingly, “means for generating a message” is governed by §112
`
`¶6.
`
`Under §112 ¶6, claim terms are construed to cover the corresponding struc-
`
`ture described in the specification as performing the recited function, and equiva-
`
`lents thereof. Williamson, 2015 WL 3687459, *9, 14. Here, the recited function is
`
`“generating a message.” The ’082 Patent uses reference numeral 10F to identify
`
`the message generation means for generating a message. HUAWEI-1001, 4:60-
`
`5:4; 13:42-62. Reference numeral 10F in the ’082 Patent designates a scheduling
`
`request (SR) resource processor. Id., 6:54-56. The ’082 Patent, however, does not
`
`provide details for the SR resource processor. At most, under the BRI, the ’082
`
`
`
`12
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`

`

`Attorney Docket No. 35548-0036IP1
`IPR of U.S. Patent No. 8,121,082
`Patent describes the SR resource processor as including general processing compo-
`
`nents in a user equipment (“UE”), such as general purpose computers, special pur-
`
`pose computers, microprocessors, digital signal processors (DSPs) and processors
`
`based on a multicore processor architecture. Id., 7:13-18. Thus, “means for gener-
`
`ating a message” should be construed to require the function of “generating a mes-
`
`sage” performed by this structure. HUAWEI-1003, [42]-[43].
`
`“first determining means for determining” (Claim 10)
`
`The claim term “first determining means for determining” in claim 10 is
`
`governed by 35 U.S.C. §112 ¶6. The term recites “means for” and no other limita-
`
`tion in claim 10 informs a POSITA as to the structure of the limitation that would
`
`rebut the presumption created by use of the term “means.” HUAWEI-1003, [44]-
`
`[46].
`
`Here, the recited function is “determining whether an acknowledgement is to
`
`be transmitted.” The ’082 Patent uses reference numeral 10E to identify the first
`
`determining means for determining whether an acknowledgement is to be transmit-
`
`ted. HUAWEI-1001, 4:60-5:4; 13:42-62. Reference numeral 10E in the ’082 Pa-
`
`tent designates an ACK/NACK resource processor. Id., 6:54-56. The ’082 Patent,
`
`however, does not provide details for the ACK/NACK resource processor. At
`
`most, under the BRI, the ’082 Patent describes the ACK/NACK resource processor
`
`
`
`13
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`

`

`Attorney Docket No. 35548-0036IP1
`IPR of U.S. Patent No. 8,121,082
`as including general processing components in a UE, such as general purpose com-
`
`puters, special purpose computers, microprocessors, digital signal processors
`
`(DSPs) and processors based on a multicore processor architecture. Id., 7:13-18.
`
`Thus, “first determining means” should be construed to require the function of “de-
`
`termining whether an acknowledgement is to be transmitted” performed by this
`
`structure. HUAWEI-1003, [45]-[46].
`
`“second determining means for determining” (Claim 10)
`
`The claim term “second determining means for determining” in claim 10 is
`
`governed by 35 U.S.C. §112 ¶6. The term recites “means for” and no other limita-
`
`tion in claim 10 informs a POSITA as to the structure of the limitation that would
`
`rebut the presumption created by use of the term “means.” HUAWEI-1003, [47]-
`
`[49].
`
`Although the ’082 Patent labels this determining means as a second deter-
`
`mining means, the ’082 Patent does not describe two separate determining means
`
`and confirms that the second determining means is the same as the first determin-
`
`ing means. Specifically, the ’082 Patent uses reference numeral 10E to identify the
`
`second determining means for determining whether a negative-acknowledgement
`
`is to be transmitted. HUAWEI-1001, 4:60-5:4; 13:42-62. Reference numeral 10E
`
`in the ’082 Patent designates an ACK/NACK resource processor. Id., 6:54-56. As
`
`discussed for the first determining means, under the BRI, the structure identified in
`
`
`
`14
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`

`

`Attorney Docket No. 35548-0036IP1
`IPR of U.S. Patent No. 8,121,082
`the ’082 Patent as the second determining means includes one or more of general
`
`purpose computers, special purpose computers, microprocessors, digital signal pro-
`
`cessors (DSPs) and processors based on a multicore processor architecture. Thus,
`
`“second determining means for determining” should be construed to require the
`
`function of “determining whether a negative-acknowledgement is to be transmit-
`
`ted” performed by this structure. HUAWEI-1003, [48]-[49].
`
`II.
`SUMMARY OF THE ’082 PATENT
`The ’082 Patent describes transmitting a scheduling request with or without
`
`simultaneous ACK/NACK transmission on a physical uplink control channel
`
`(PUCCH). HUAWEI-1001, 6:1-4. Particularly, the ’082 Patent describes deter-
`
`mining whether an ACK or NACK is to be transmitted in a sub-frame with a
`
`scheduling request. HUAWEI-1001, 10:38-40.
`
`III. APPLICATION OF PRIOR ART TO CHALLENGED CLAIMS
`Petitioner will prevail on the Challenged Claims.
`
`A. Grounds 1A-B: KwakPat883 and LGE each separately renders obvi-
`ous claims 10, 12-13, and 17
`Ground 1A demonstrates how KwakPat883 addresses “simultaneously trans-
`
`mitting a scheduling request and other control signals,” HUAWEI-1005, 2:18-19.
`
`As shown in FIG.9 below, KwakPat883 discloses three scenarios: “path (1) de-
`
`notes transmission of the SR;” “path (2) denotes transmission of the SR and an
`
`
`
`15
`
`

`

`Attorney Docket No. 35548-0036IP1
`IPR of U.S. Patent No. 8,121,082
`ACK/NACK signal;” “path (3) denotes transmission of the ACK/NACK signal.”
`
`HUAWEI-1005, 11:42-45.
`
`KwakPat883, FIG.9 (annotated)
`
`
`
`KwakProv812’s “transmission method…can support both the control signal and
`
`the SR in the same time-frequency resource,” and, as shown in FIG. 7, proposes
`
`the same three paths. HUAWEI-1008, 2:8-10, 13:7-24.
`
`
`
`16
`
`

`

`Attorney Docket No. 35548-0036IP1
`IPR of U.S. Patent No. 8,121,082
`
`KwakProv812, FIG.7 (annotated)
`
`
`
`Through this and additional disclosure, KwakPat883 (KwakProv812) ren-
`
`ders obvious claims 10, 12-13, and 17.
`
`Complementing Ground 1A, Ground 1B demonstrates how LGE, a standard
`
`publication by the assignee of KwakPat883, provides similar disclosure to Kwak-
`
`Pat883. HUAWEI-1003, [185]-[188]. Similar to KwakPat883, LGE discloses the
`
`same multiplexing of uplink control signals, such as “simultaneous transmission
`
`with ACK/NAK…when SR is to be transmitted.” HUAWEI-1013, 1.
`
`
`
`17
`
`

`

`Attorney Docket No. 35548-0036IP1
`IPR of U.S. Patent No. 8,121,082
`LGE proposed “simultaneous transmission with ACK/NAK…when SR is to
`
`be transmitted.” HUAWEI-1013, 1. In LGE, “UEs…transmit SR and
`
`ACK/NACK simultaneously in one subframe.” HUAWEI-1013, 1.
`
`Notably, LGE’s transmission is similar, if not identical, to KwakPat883’s
`
`simultaneous transmission of SR and ACK/NACK, illustrating the same three sce-
`
`narios in FIG.5. HUAWEI-1013, 5.
`
`
`
`LGE, FIG.5
`For conciseness, KwakPat883 and LGE have been addressed together. For
`
`each claim element, Petitioner applies KwakPat883 as Ground 1A. Then, as
`
`Ground 1B, Petitioner provides citation to LGE that demonstrates how LGE has
`
`similar disclosure to the KwakPat883 disclosure applied to the claim element in
`
`Ground 1A.
`
`
`
`18
`
`

`

`Attorney Docket No. 35548-0036IP1
`IPR of U.S. Patent No. 8,121,082
`
`[10A] “An apparatus comprising:”
`KwakPat883 discloses an apparatus as user equipment – “[a] wireless com-
`
`munication system includes at least one user equipment (UE).” HUAWEI-1005,
`
`4:36-52; HUAWEI-1003, [71]. In KwakProv812, “the user equipment (UE)
`
`transmits a scheduling request.” HUAWEI-1008, 4; HUAWEI-1003, [72].
`
`LGE’s “UE should transmit its SR and ACK/NACK signal simultaneously.”
`
`HUAWEI-1013, 5; HUAWEI-1003, [189].
`
`[10B] “message generation means for generating a message comprising a
`scheduling request;”
`KwakPat883’s “UE” has the structure of the message generation means dis-
`
`cussed in III.C. HUAWEI-1005, 4:36-52; 17:19-32; HUAWEI-1003, [74]-[75].
`
`Although KwakProv812 and LGE describe a UE, KwakProv812 and LGE lack dis-
`
`closure of components found within the UE. HUAWEI-1008, 4; HUAWEI-1013,
`
`5. However, a POSITA would have found it obvious for the ’082 Patent’s pro-
`
`cessing components to be included in the UE described by KwakProv812 and
`
`LGE. HUAWEI-1003, [75], [190]-[191]. In fact, KwakPat883’s UE has these
`
`processing components. HUAWEI-1005, 4:36-52; 17:19-32. Thus, KwakPat883
`
`(KwakProv812) and LGE each separately render obvious a message generation
`
`means. HUAWEI-1003, [73]-[75], [190]-[191].
`
`
`
`19
`
`

`

`Attorney Docket No. 35548-0036IP1
`IPR of U.S. Patent No. 8,121,082
`Further, KwakPat883 generates a message comprising a scheduling request.
`
`HUAWEI-1003, [76]-[77]. KwakPat883 discloses “preparing a scheduling re-
`
`quest resource for transmitting a scheduling request on an uplink control channel
`
`in one subframe.” HUAWEI-1005, 2:34-56; 3:9-21,46-54. In fact, KwakPat883
`
`discloses “a method of generating a scheduling request channel for transmitting a
`
`scheduling request (SR)” with FIG. 9 showing “an example of transmission of a
`
`SR.” Id., 7:16-8:29; 11:41-12:46.
`
`
`
`KwakPat883, FIG. 9 (annotated)
`
`
`
`KwakProv812 provides similar disclosure at page 13 and FIG. 7. HUAWEI-
`
`1008, 13-14; HUAWEI-1003, [78]-[79].
`
`
`
`20
`
`

`

`Attorney Docket No. 35548-0036IP1
`IPR of U.S. Patent No. 8,121,082
`
`KwakProv812, FIG. 7
`
`
`
`FIG. 16 illustrates a message comprising a scheduling request generated by
`
`KwakPat883’s UE. HUAWEI-1003, [80]-[81]. KwakPat883’s “transmitter may
`
`transmit the SR by multiplying a predetermined phase variation or orthogonal se-
`
`quence or by carrying a specific modulation signal at a portion where the
`
`ACK/NACK signal is carried in every slot.” HUAWEI-1005, 17:4-13.
`
`Message
`
`Scheduling Request
`Signal
`
`
`
`21
`
`
`
`

`

`Attorney Docket No. 35548-0036IP1
`IPR of U.S. Patent No. 8,121,082
`KwakPat883, FIG. 16 (annotated)
`
`KwakProv812 provides similar disclosure at page 21 and FIG. 13.
`
`HUAWEI-1008, 21-22; HUAWEI-1003, [82]-[83].
`
`KwakProv812, FIG. 13
`
`
`
`Further, LGE generates a message comprising a scheduling request.
`
`HUAWEI-1003, [192]-[193]. LGE discloses “transmit[ting] the SR and
`
`ACK/NACK simultaneously at the same subframe.” HUAWEI-1013, 5. LGE per-
`
`forms “multiplexing SR and/or ACK/NACK” with FIG. 5 showing “how to trans-
`
`mit SR and/or ACK/NACK signal.” Id., 5-6.
`
`
`
`22
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`

`

`Attorney Docket No. 35548-0036IP1
`IPR of U.S. Patent No. 8,121,082
`
`LGE, FIG. 5 (annotated)
`
`
`
`By generating and transmitting a message that includes a scheduling request
`
`signal, KwakPat883 (KwakProv812) and LGE each separately render obvious fea-
`
`ture [10B]. HUAWEI-1003, [73]-[83], [190]-[193].
`
`To the extent Patent Owner argues for the construction in District Court,
`
`KwakPat883 (KwakProv812) and LGE each separately render obvious “message
`
`generation means (10F) such as processor, memory, and/or associated software for
`
`mapping the constellation points shown in Figs. 3, 4, 5, 6, or 12, or the constella-
`
`tion points described in the corresponding text, e.g., 7:39- 8:59, 9:52-61, and
`
`
`
`23
`
`

`

`Attorney Docket No. 35548-0036IP1
`IPR of U.S. Patent No. 8,121,082
`equivalents thereof.” HUAWEI-1022, 18. As discussed above in [10B], Kwak-
`
`Pat883 (KwakProv812) and LGE render obvious processor, memory, and/or asso-
`
`ciated software. HUAWEI-1003, [84]-[85], [194]-[195].
`
`Further, KwakPat883 (KwakProv812) and LGE render obvious mapping
`
`constellation points as set forth in ’082 Patent or an equivalent thereof. HUAWEI-
`
`1003, [86], [196]. KwakPat883 spreads control signals (e.g., ACK/NACK, sched-
`
`uling request, etc.) using OFDM symbols in two slots of a sub-frame in much the
`
`same way as the ’082 Patent. HUAWEI-1005, 3:46-54, 4:65-67, 5:20-51, 6:6-28,
`
`7:44-56, 8:30-9:9, 11:31-62, 12:28-34, 16:21-60, 17:1-18, FIGS. 16-17. Specifi-
`
`cally, in KwakPat883, “[t]he ACK/NACK signal is spread using four orthogonal
`
`sequences w0, w1, w2, and w3 for four OFDM symbols. The RS is also spread us-
`
`ing an orthogonal sequence having a length of 3.” HUAWEI-1005, 6:59-62.
`
`KwakProv812 provides similar disclosure at pages 5-7, 10, 15, 20-21 and
`
`FIGS. 12-13. Specifically, KwakProv812 discloses, “[i]n the case of the existing
`
`channel for transmitting the ACK/NACK control signal as shown in FIG. 3, the
`
`control channel is configured by 2D spreading using ZC codes in the frequency do-
`
`main and orthogonal codes having a length of 4 (for short CP) for the ACK/NACK
`
`data or orthogonal codes having a length of 3 for RS in the time domain.”
`
`HUAWEI-1008, 6.
`
`
`
`24
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`

`

`Attorney Docket No. 35548-0036IP1
`IPR of U.S. Patent No. 8,121,082
`LGE provides similar disclosure to KwakPat883 at pages 2 and 5-6. Specifi-
`
`cally, LGE discloses, “[h]ere in these figures, the number in the axis of orthogonal
`
`index represents the index of dedicated or shared orthogonal resource that is as-
`
`signed to each ACK/NACK, SR or CQI.” HUAWEI-1013, 2.
`
`From these descriptions, a P