UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`RED ROCK ANALYTICS, LLC.
`
`
` Plaintiff,
`
` v.
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA,
`INC., SAMSUNG SEMICONDUCTOR, INC.,
`and SAMSUNG AUSTIN
`SEMICONDUCTOR, LLC,
`
`
`Defendants
`
`
`
`
`
`
`
`Case No. 2:17-cv-00101-RWS-RSP
`
`
`
`
`
`JURY
`
`DEFENDANTS’ INVALIDITY CONTENTIONS
`
`IPR2018-00556
`Exhibit 2010 / Page 1
`
`

`

`TABLE OF CONTENTS
`
`INTRODUCTION........................................................................................................................ 3
`
`I.
`
`II.
`
`RED ROCK’S ASSERTED PATENTS AND CLAIMS .................................................. 4
`
`IDENTIFICATION OF PRIOR ART REFERENCE PER PATENT RULE 3–
`3(A) .................................................................................................................................... 4
`
`III.
`
`CLAIM CHARTS PREPARED PER PATENT RULE 3–3(B) AND (C) ........................ 6
`
`A.
`
`Reasons to Combine and/or Modify References ................................................... 7
`
`IV.
`
`RED ROCK’S ASSERTED CLAIMS ARE INVALID UNDER 35 U.S.C. § 112 ........ 15
`
`A.
`
`B.
`
`C.
`
`Lack of Written Description and/or Enablement ................................................. 16
`
`Indefiniteness ....................................................................................................... 20
`
`Means-Plus-Function Claims ............................................................................... 21
`
`
`
`
`
`
`
`
`2
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`IPR2018-00556
`Exhibit 2010 / Page 2
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`

`

`Introduction
`
`Pursuant to P.R. 3–3 and the Docket Control Order the Court has entered in this case
`
`(Dkt. 41), Defendants Samsung Electronics Co., Ltd., Samsung Electronics America, Inc.,
`
`Samsung Semiconductor, Inc., and Samsung Austin Semiconductor, LLC (collectively,
`
`“Samsung” or “Defendants”) provide the following Invalidity Contentions.
`
`At this early stage of the case, Samsung’s investigation and analysis of potential prior art
`
`is not yet complete. Samsung notes that it has not completed discovery of Red Rock Analytics
`
`LLC (“Red Rock”), Dr. Cafarella, or of any third-parties who may possess relevant information
`
`pertaining to the identification and analysis of potential prior art or other theories of invalidation
`
`or unenforceability. Accordingly, Samsung expressly reserves its right to present additional
`
`items of prior art or theories of invalidity under 35. U.S.C. § 102(a), (b), (e), (f), (g) and/or § 103
`
`to the extent that its ongoing discovery or investigation yields a basis for such a contention.
`
`Samsung’s invalidity contentions are based on its current understanding of the asserted
`
`claims as applied by Red Rock in its infringement contentions. At least under Red Rock’s
`
`apparent constructions and infringement contentions, all of the elements of the asserted claims were
`
`already known or obvious before the respective priority date of each of the Asserted Patents.
`
`Samsung makes no admissions, express, or implied, concerning the scope or interpretation of the
`
`claims, and nothing in these disclosures should be interpreted as agreement with Red Rock’s
`
`implicit constructions or infringement theories. Samsung expressly reserves the right to propose
`
`its own claim construction positions and to oppose Red Rock’s claim construction positions in
`
`accordance with the deadlines set forth by the Court in the Docket Control Order.
`
`Samsung also reserves the right to prove invalidity of the asserted claims on bases other
`
`than those required to be disclosed in these disclosures pursuant to Patent Rule 3–3. For
`
`instance, Samsung reserves the right to contend that one or more asserted claims are invalid
`
`3
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`

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`because they are ineligible subject matter and thus fail to comply with 35. U.S.C. § 101.
`
`Samsung also reserves the right to assert that the patent is invalid due to incorrect inventorship
`
`per 35. U.S.C. § 116/256.
`
`Samsung further reserves the right to modify or add additional contentions in the event
`
`that Red Rock provides amended infringement contentions, or in response to the Court’s
`
`anticipated claim construction order.
`
`I.
`
`RED ROCK’S ASSERTED PATENTS AND CLAIMS
`
`The patent asserted by Red Rock is U.S. Patent No. 7,346,313 (the “Asserted Patent” or
`
`“’313 Patent”). Red Rock asserts claims 1 through 52 and 59 through 74 (hereinafter the
`
`“Asserted Claims”).
`
`II.
`
`IDENTIFICATION OF PRIOR ART REFERENCE PER PATENT RULE 3–3(A)
`
`In this section, Samsung identifies each item of prior art that it alleges anticipates each
`
`Asserted Claim under 35 U.S.C. § 102, or renders it obvious under 35 U.S.C. § 103. See P. R.
`
`3−3(a). Red Rock has admitted that “each of the Asserted Claims is entitled to a filing date of
`
`March 4, 2002.” Red Rock’s July 12, 2017 P. R. 3–1 Disclosures at 3. Accordingly, there is no
`
`dispute that the following patents and publications are prior art to the Asserted Patent under 35
`
`U.S.C. § 102(a), (b) and/or (e):
`
` U.S. Patent No. 5,381,108 (“Whitmarsh”)
`
` U.S. Patent No. 5,933,448 (“Katisko”)
`
` U.S. Patent No. 5,995,541 (“Navid”)
`
` U.S. Patent No. 6,091,941 (“Moriyama”)
`
` U.S. Patent No. 6,330,290 (“Glas”)
`
` U.S. Patent No. 6,717,981 (“Mohindra”)
`
`4
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` U.S. Patent No. 6,898,252 (“Yellin”)
`
` U.S. Patent No. 6,940,916 (“Warner”)
`
` Japanese Patent Publication No. H10-327209 (“Kabashima”)
`
` M. Faulkner, T. Mattsson, & W. Yates, Automatic Adjustment of Quadrature
`Modulators, 27 ELECTRONICS LETTERS 214 (1991) (“Faulkner”)
`
` John K. Cavers, Adaptive Compensation for Imbalance and Offset Losses in
`Direct Conversion Transceivers, 42 IEEE TRANSACTIONS ON VEHICULAR
`TECHNOLOGY 581, 581 (1993) (“Cavers I”)
`
` David A. Noon et al., Correction of I/Q Errors in Homodyne Step Frequency
`Radar Refocuses Range Profiles, 2 INT’L CONFERENCE ON ACOUSTICS, SPEECH, &
`SIGNAL PROCESSING 369 (1995) (“Noon”)
`
` Asad A. Abidi, Direct Conversion Radio Transceivers for Digital
`Communications, 30 IEEE J. OF SOLID-STATE CIRCUITS 1399, 1401 (1995)
`(“Abidi”)
`
` John K. Cavers, A Fast Method for Adaptation of Quadrature Modulators and
`Demodulators in Amplifier Linearization Circuits, Vehicular Technology
`Conference, Mobile Technology for the Human Race, Apr. 28 to May 1, 1996
`(“Cavers II”)
`
` John K. Cavers, New Methods for Adaptation of Quadrature Modulators and
`Demodulators in Amplifier Linearization Circuits, 46 IEEE TRANSACTIONS ON
`VEHICULAR TECHNOLOGY 707 (1997) (“Cavers III”)
`
` Jack P.F. Glas, Digital I/Q Imbalance in a Low-IF Receiver, 3 IEEE GLOBECOM
`1461 (1998) (“Glas Paper”).
`
` Ashkan Mashhour et al., On the Direct Conversion Receiver—A Tutorial,
`MICROWAVE J., Jun. 2001 (“Mashhour”)
`
`The following claims are not entitled to the priority date of the ’313 Patent’s provisional
`
`application because the provisional application does not provide written description support for
`
`them: 8, 9, 10, 12, 13, 14, 18, 19, 20, 23, 24, 25, 27, 28, 29, 34, 35, 36, 45, 46, 47, 49, 50, 51, 60,
`
`61, 62, 64, 65, 66, 71, 72, and 73. Samsung also contends that the as-filed application does not
`
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`provide written description support for these claims, as set out below, but at the very least they
`
`are not supported by the provisional application.
`
`The identified prior art references further include any other references cited in this
`
`document or the accompanying claim charts.
`
`III. CLAIM CHARTS PREPARED PER PATENT RULE 3–3(B) AND (C)
`
`Pursuant to P. R. 3–3(b) and (c), Samsung provides the following charts identifying
`
`where specifically in each alleged item of prior art each limitation of each asserted claim is
`
`found. These charts also identify how the charted claims are anticipated by the primary
`
`references disclosing each limitation of the claims, as well as identifying how the charted claims
`
`are obvious over the primary references in light of particular secondary references. In the charts,
`
`where combinations of references render limitations obvious, the motivation to combine such
`
`references is included in the chart for the limitation in question as well as in this document. See
`
`P. R. 3–3(b).
`
`The prior art references may disclose the elements of the asserted claims either explicitly
`
`or inherently, or may be relied upon to show the state of the art in the relevant timeframe.
`
`Persons having ordinary skill in the art at the time of the priority date of the Asserted Patent
`
`knew to read references as a whole, and in the context of other publications and literature as well
`
`as the general knowledge in the field. Samsung may rely on all such information, including
`
`uncited portions of the prior art references listed herein, and on other publications and expert
`
`testimony to provide context and as aids to understanding and interpreting the identified
`
`references, or to establish that a person of ordinary skill in the art would have been motivated to
`
`modify or combine any of the references so as to render the asserted claims obvious.
`
`In the charts, citations to specific portions of the references are exemplary and not
`
`exhaustive, and are intended to fairly disclose Samsung’s invalidity contentions. Other portions
`
`6
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`of the references may also contain information and/or teachings that anticipate and/or render
`
`obvious elements of the Asserted Claims. Further, the combinations of references and products
`
`presented in Samsung’s contentions are not intended to, and should not be interpreted as,
`
`suggesting that any reference or product identified in a chart does not anticipate any asserted
`
`claim. Additionally, citations to a particular figure in a prior art reference encompass all text
`
`relating to the figure, and citations to text encompass all figures relating to the text.
`
`
`
`Exhibit
`Number
`
`Exhibit 1
`
`Exhibit 2
`
`Exhibit 3
`
`
`
`Exhibit Description
`
`’313 Patent as anticipated by Warner and/or obvious over Warner alone or
`in combination with Whitmarsh, Navid, Moriyama, Mohindra, Yellin,
`Faulkner, and/or Noon.
`
`’313 Patent as anticipated by Yellin and/or obvious over Yellin alone or in
`combination with Whitmarsh, Navid, Moriyama, Mohindra, Warner, Faulkner,
`and/or Noon.
`
`’313 Patent as obvious over Mohindra and Glas, alone or in combination
`with Whitmarsh, Navid, Moriyama, Mohindra, Yellin, Warner, Faulkner, Noon,
`and/or the Glas Paper.
`
`A.
`
`Reasons to Combine and/or Modify References
`
`Samsung notes that for all the references identified above, there would have been a
`
`reason, motivation, and suggestion to combine them in any potential permutation or
`
`combination, not limited to those identified specifically in the charts accompanying this
`
`disclosure. More particularly, all of the identified references are expressly directed to: (1) radio
`
`frequency transceivers, for use in mobile communications devices (e.g., cellular phones); (2)
`
`were directed at GSM, TDMA, CDMA, WCDMA, or related technologies; (3) were directed to
`
`correcting quadrature distortion, including IQ gain imbalance, in radio frequency circuits of
`
`quadrature transmitters, receivers, or transceivers; (4) were contemplated for implementation in
`
`7
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`integrated circuits, (5) involve generating baseband signals, sending those signals through a
`
`transmit chain, looping the resulting RF signal back through the receive chain, and observing the
`
`baseband receive signal in order to apply adjustments, compensation, correction, calibration, or
`
`cancellation factors to minimize distortions in the transmitter and/or receiver; (6) were invented
`
`by the same company or engineers; and/or (7) were directed to the same or similar international
`
`or U.S. patent classifications. As a result, one of ordinary skill would have appreciated that all of
`
`the references identified above were directed at one or more of the same problems, thereby
`
`providing a motivation to combine their teachings. Additionally, it would have been obvious to
`
`try various combinations of components in the transceivers disclosed in the cited references.
`
`More particularly, it would have been obvious to apply any of the various teachings on
`
`calibration, compensation, correction, and/or cancellation of quadrature imbalance to the well-
`
`known loopback architecture recited in the claims.
`
`The ’313 Patent concedes that both direct- and heterodyne-conversion transceivers for
`
`digital communications were “well known” and “conventional” in the art by 2002. ’313 Patent
`
`1:14–61, 4:47–53, 6:46–56 (“It is well known in the art that a variety of such direct modulator
`
`and demodulator design implementations can be used, including conventional designs as shown
`
`in Fig. 1 . . . .”), 8:4–6 (“a conventional heterodyne transceiver”), 8:10–18 (“well-known
`
`elements of transceiver RF design”). Indeed, the heterodyne receiver was introduced a century
`
`ago, and radio pioneers were considering the use of direct conversion as early as the 1920s.
`
`Abidi at 1401; Cavers I at 581.
`
`As the ’313 Patent admits, the problem of I-Q gain imbalance and techniques for
`
`calibrating this imbalance in transceivers were also “commonly known” and “conventional.”
`
`’313 Patent 2:7–10 (“commonly known alternate calibration approaches”), 4:54–59, 7:28–33
`
`8
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`IPR2018-00556
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`(“FIGS. 3a and 3b show a conventional prior art approach to calibration of the baseband gains in
`
`the transmit and receive chains of a transceiver, the approach being one which can be used for
`
`. . . either direct-conversion or heterodyne-conversion transceivers.”); Abidi at 1400, 1402
`
`(recognizing in 1995 that I-Q gain imbalances or mismatches may be “self-calibrated with
`
`loopback modes”), 1405–07; Cavers I at 581–88 (discussing in 1993 techniques for
`
`compensating I-Q gain imbalance in transceivers).
`
`In addition, providing a signal path from the RF transmit output to the RF receive input in
`
`a transceiver for testing and calibration was known and conventional in the art well before the
`
`time of the invention, for example, as illustrated in the exemplary figures below. In fact, prior to
`
`the ’313 Patent, skilled artisans were using signal paths from the RF transmit output to the RF
`
`receive input to calibrate I-Q gain imbalance, as shown below.
`
`9
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`Katisko Fig. 5 (annotated) (showing path from RF transmit output to RF receive input via
`
`coupler 42, mixer 44, and coupler 48 for calibrating, I-Q gain imbalance in transmit chain, which
`
`is varied using amplifiers 16 18), 1:46–2:25, 3:6–51. 4:60–5:9.
`
`
`
`10
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`Whitmarsh Fig. 1.
`
`Navid Fig. 9.
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`11
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`
`Moriyama Fig. 6.
`
`One of skill in the art would have been motivated to combine the teachings of different
`
`references employing a loopback architecture to calibrate or compensate for errors in quadrature
`
`transceivers, including the references cited above and referenced in the accompanying claim
`
`charts. The similarity of architecture (transmit-receive loopback in a quadrature transceiver) and
`
`similarity of purpose (calibrating or compensating for distortion and imbalance in the transmitter
`
`and/or receiver) would have been a strong additional motivation to combine such references.
`
`In particular, one of ordinary skill would have had a reason, motivation, and suggestion
`
`to combine such loopback architectures that describe calibration of a transmitter (e.g. Mohindra)
`
`with those that involve calibration of a receiver (e.g. Glas). This is because the references that
`
`describe either transmitter or receiver calibration (1) expressly describe the transmitter or
`
`receiver as being part of a “transceiver” (i.e., transmitter/receiver), (2) generally depict blocks
`
`corresponding to both a “transmitter” and receiver, and/or (3) the transmitter or receiver is
`
`12
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`directed to mobile/cellular phones, WiFi (802.11), Bluetooth, or other communication systems
`
`that were understood to be bi-directional and thus required a transmitter/receiver pair. The
`
`motivation to improve performance in either the transmitter or receiver would likewise apply to
`
`the other direction of communication in the transceiver. Indeed it was well known in the art that
`
`it was important to compensate for distortions in both transmitter and receiver, particularly in
`
`direct conversion transceivers. See, e.g., Cavers I at 581 (providing an “adaptive compensation
`
`technique” for both a quadrature transmitter and quadrature receiver).
`
`Further, motivation to combine the references would have been provided nearly a decade
`
`before the priority date of the ’313 Patent by articles such as the Cavers I article cited above.
`
`Cavers identified the problem the ’313 Patent seeks to solve (IQ gain imbalance) as one of the
`
`most important challenges with quadrature transceivers. Cavers I at 581 (“Analog
`
`implementations of a quad mod and quad demod suffer from several deficiencies . . . of which
`
`amplitude and phase imbalance and DC offset are the most important.”). Cavers further
`
`expounds on particular directions for work to explore those problems by suggesting adoption of a
`
`mixed digital and analog approach in which distortions and imperfections, which Cavers calls
`
`“impairments,” in the analog circuit path are compensated for using digital signal processing
`
`algorithms, thereby outlining the method to address the problem that a person having ordinary
`
`skill in the art would expect to succeed with limited exploration. In particular, Cavers provided
`
`an architectural framework that uses an “analog quad mod and demod, with their wide
`
`bandwidth and lower power operation, and compensates for their impairments by DSP
`
`algorithms.” Cavers suggested approach gave persons having skill in the art a framework for
`
`exploration and a motivation to combine existing references to solve the IQ imbalance problem
`
`for quadrature transceivers for mobile communications.
`
`13
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`A few years later, in 1996, Cavers himself suggested a loopback architecture for
`
`correcting impairments in a quadrature transceiver, as shown below.
`
`
`
`Cavers II at 1310 (Fig. 1); Cavers III at 708 (Fig. 1). Cavers again recognized that
`
`“[c]ompensation for [gain and phase imbalance and dc offset], either with digital signal
`
`processor (DSP) or analog circuits, is essential to meeting the stringent out-of-band emission
`
`requirements of mobile communications.” Cavers III at 707. Cavers work would have
`
`motivated one of skill in the art seeking to compensate for impairments in a quadrature
`
`transceiver to look to other references combining DSPs with analog mixers, including the cited
`
`and charted references, to find an architecture and algorithm that would be effective.
`
`In connection with known IQ calibration and compensation architectures, a number of
`
`different test vectors or test signals were known in the art. As explained in Cavers III, “[s]ome
`
`existing methods . . . rely on training signals for iterative adjustment of the compensation circuit
`
`parameters. These training signals consist of short bursts of carrier with four selected phases for
`
`imbalance adjustment, preceded by short ‘bursts’ of silence for adjustment of dc offset.” Cavers
`
`III at 707. Cavers cites Faulkner, among other sources, as disclosing such training signals.
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`14
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`Cavers III at 716 n.6. Faulkner in 1991 disclosed the use of training signals to compensate for
`
`both gain imbalance and phase error in a quadrature modulator. These training signals consist of
`
`“[t]est vectors (A,0) and (0,A)”—that is, purely real and purely imaginary signals applied at the
`
`baseband inputs to the transmit chain. Faulkner at 215. Faulkner further disclosed a test vector
`
`comprising a “constant amplitude rotating phasor [i = cos(2πft) and q = sin(2πft)].” Id. The use
`
`of such test vectors to correct IQ imbalance and phase error was thus known in the art over a
`
`decade before the purported inventions of the ’313 Patent. One of skill in the art designing a
`
`loopback calibration or compensation system for IQ imbalance would have been motivated to
`
`use these test signals at least because they were well known in the field for use in solving exactly
`
`the same problem (IQ imbalance in a quadrature transceiver). It would at least have been
`
`obvious to try such well-known test signals.
`
`At least the teachings of the foregoing references disclose the use of a loopback
`
`configuration of a quadrature transceiver to allow calibration, compensation, correction, and/or
`
`cancellation of quadrature gain imbalance in the transmitter and receiver, and provide motivation
`
`to modify any of the charted references (to the extent not already expressly or inherently
`
`disclosed) to use such an architecture and technique to calibrate the transmit and receive chains
`
`in their entirety.
`
`IV. RED ROCK’S ASSERTED CLAIMS ARE INVALID UNDER 35 U.S.C. § 112
`
`Pursuant to Rule 3–3(d), Samsung hereby identifies grounds of invalidity based on: (1)
`
`lack of written description under 35. U.S.C. § 112 first paragraph; (2) lack of enablement under
`
`35 U.S.C. § 112 first paragraph, and (3) indefiniteness under 35 U.S.C. § 112 second paragraph.
`
`Samsung’s invalidity contentions under 35 U.S.C. § 112 depend, in part, on the Court’s claim
`
`constructions for the asserted claims as well as infringement positions Red Rock may take later
`
`in the case. Consequently, Samsung identifies the issues under 35 U.S.C. § 112 which it is
`
`15
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`presently aware and expressly reserves the right to supplement as a result of future developments
`
`in the case.
`
`A.
`
`Lack of Written Description and/or Enablement
`
`The ’313 Patent does not provide sufficient written description to establish that the
`
`inventor was in possession of the alleged inventions recited in certain claims at the time the
`
`patent applications were filed. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed.
`
`Cir. 2010). In other words, the applicants did not describe their purported inventions in a manner
`
`that “reasonably conveys to those skilled in the art that the inventor had possession of the
`
`claimed subject matter as of the filing date.” Id. The specification of the Asserted Patents also
`
`does not enable one of ordinary skill in the art to make and/or use certain recited elements of the
`
`asserted claims of the Asserted Patents without undue experimentation. To the extent the
`
`following claim limitations are even definite under 35 U.S.C. § 112 second paragraph, the
`
`specifications of the Asserted Patents fail to sufficiently describe the inventions such that one of
`
`ordinary skill could make and use the inventions without undue experimentation as required by
`
`35 U.S.C. § 112, first paragraph.
`
`Claim Terms invalid for lack of written description and/or enablement
`1
`
`“generated in response to and as a function of a signal generated through the transmit
`chain”
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`“and which in turn”
`
`Unsupported terms in parent claim
`
`Unsupported terms in parent claim
`
`Unsupported terms in parent claim
`
`Unsupported terms in parent claim
`
`Unsupported terms in parent claim
`
`“a processor for processing of the baseband receive signal as required for the normal
`function of the transceiver”
`
`“a calibration RF signal generator for generating a calibration RF signal as a
`baseband transmit signal”
`
`16
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`Claim Terms invalid for lack of written description and/or enablement
`“a processor for processing the baseband receive calibration RF signal to form an
`observable indicator of I-Q imbalance”
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`“and which in turn”
`
`Unsupported terms in parent claim
`
`“means for preventing the signal path for injecting the calibration RF signal from
`permanently imparting an unfavorable net phase shift from baseband transmit to
`baseband receive”
`
`Unsupported terms in parent claim
`
`“phase-calibration cycling subsystem”
`
`Unsupported terms in parent claim
`
`“slowly time-varying phase modulation subsystem”
`
`Unsupported terms in parent claim
`
`Unsupported terms in parent claim
`
`Unsupported terms in parent claim
`
`Unsupported terms in parent claim
`
`Unsupported terms in parent claim
`
`“a processor for processing of the baseband receive signal as required for the normal
`function of the transceiver”
`
`“a calibration RF signal generator for generating a calibration RF signal as a
`baseband transmit signal”
`
`“a processor for processing the baseband receive calibration RF signal to form an
`observable indicator of I-Q imbalance”
`
`“and which in turn”
`
`Unsupported terms in parent claim
`
`Unsupported terms in parent claim
`
`Unsupported terms in parent claim
`
`Unsupported terms in parent claim
`
`Unsupported terms in parent claim
`
`“a processor for processing of the baseband receive signal as required for the normal
`function of the transceiver”
`
`“a calibration RF signal generator for generating a calibration RF signal as a
`baseband transmit signal”
`
`“a processor for processing the baseband receive calibration RF signal to form an
`observable indicator of I-Q imbalance”
`
`“and which in turn”
`
`17
`
`IPR2018-00556
`Exhibit 2010 / Page 17
`
`

`

`Claim Terms invalid for lack of written description and/or enablement
`23
`
`Unsupported terms in parent claim
`
`“means for preventing the signal path for injecting the calibration RF signal from
`permanently imparting an unfavorable net phase shift from baseband transmit to
`baseband receive”
`
`24
`
`25
`
`26
`
`27
`
`28
`
`29
`
`30
`
`31
`
`32
`
`33
`
`34
`
`35
`
`36
`
`37
`
`38
`
`39
`
`40
`
`41
`
`42
`
`43
`
`44
`
`Unsupported terms in parent claim
`
`“phase-calibration cycling subsystem”
`
`Unsupported terms in parent claim
`
`“slowly time-varying phase modulation subsystem”
`
`Unsupported terms in parent claim
`
`Unsupported terms in parent claim
`
`Unsupported terms in parent claim
`
`Unsupported terms in parent claim
`
`Unsupported terms in parent claim
`
`Unsupported terms in parent claim
`
`“a processor for processing of the baseband receive signal as required for the normal
`function of the transceiver”
`
`“a calibration RF signal generator for generating a calibration RF signal as a
`baseband transmit signal”
`
`“a processor for processing the baseband receive calibration RF signal to form an
`observable indicator of I-Q imbalance”
`
`“and which in turn”
`
`Unsupported terms in parent claim
`
`Unsupported terms in parent claim
`
`Unsupported terms in parent claim
`
`Unsupported terms in parent claim
`
`Unsupported terms in parent claim
`
`“generated in response to and as a function of a signal generated through the transmit
`chain”
`
`Unsupported terms in parent claim
`
`Unsupported terms in parent claim
`
`Unsupported terms in parent claim
`
`Unsupported terms in parent claim
`
`Unsupported terms in parent claim
`
`“a processor for processing of the baseband receive signal as required for the normal
`
`18
`
`IPR2018-00556
`Exhibit 2010 / Page 18
`
`

`

`Claim Terms invalid for lack of written description and/or enablement
`function of the transceiver”
`
`45
`
`46
`
`47
`
`48
`
`49
`
`50
`
`51
`
`52
`
`59
`
`60
`
`61
`
`62
`
`63
`
`64
`
`65
`
`66
`
`67
`
`68
`
`69
`
`70
`
`71
`
`72
`
`Unsupported terms in parent claim
`
`“preventing the injection of the calibration RF signal from permanently imparting an
`unfavorable net phase shift from baseband transmit to baseband receive”
`
`Unsupported terms in parent claim
`
`“phase-calibration cycling”
`
`Unsupported terms in parent claim
`
`“slowly time-varying phase modulating”
`
`Unsupported terms in parent claim
`
`Unsupported terms in parent claim
`
`Unsupported terms in parent claim
`
`Unsupported terms in parent claim
`
`Unsupported terms in parent claim
`
`“a processor for processing of the baseband receive signal as required for the normal
`function of the transceiver”
`
`Unsupported terms in parent claim
`
`“preventing the injection of the calibration RF signal from permanently imparting an
`unfavorable net phase shift from baseband transmit to baseband receive”
`
`Unsupported terms in parent claim
`
`“phase-calibration cycling”
`
`Unsupported terms in parent claim
`
`“slowly time-varying phase modulation”
`
`Unsupported terms in parent claim
`
`Unsupported terms in parent claim
`
`Unsupported terms in parent claim
`
`Unsupported terms in parent claim
`
`Unsupported terms in parent claim
`
`Unsupported terms in parent claim
`
`“a processor for processing of the baseband receive signal as required for the normal
`function of the transceiver”
`
`Unsupported terms in parent claim
`
`Unsupported terms in parent claim
`
`Unsupported terms in parent claim
`
`19
`
`IPR2018-00556
`Exhibit 2010 / Page 19
`
`

`

`Claim Terms invalid for lack of written description and/or enablement
`73
`
`Unsupported terms in parent claim
`
`74
`
`
`
`Unsupported terms in parent claim
`
`B.
`
`Indefiniteness
`
`The Asserted Claims containing the following limitations fail to inform those of ordinary
`
`skill in the art about the scope of the invention with reasonable certainty and thus are indefinite
`
`under 35 U.S.C. § 112, second paragraph, for failing to particularly point out and distinctly claim
`
`the subject matter the applicants regard as their invention.
`
` “generated in response to and as a function of a signal generated through the
`
`transmit chain” (claims 1, 38)
`
` “the both transmit and receive chains in their entirety” (claims 1, 38)
`
` “the calibration RF signal includes a calibration cycle” (claims 1, 7, 16, 22, 32,
`
`38, 44, 59, 69)
`
` “and which in turn” (claims 1, 7, 16, 22, 32)
`
` “the imbalanced chain” (claims 6, 16, 32, 43, 69)
`
` “as required for the normal function of the transceiver” (claims 7, 16, 22, 32, 44,
`
`59)
`
` “generating a calibration RF signal as a baseband transmit signal” (claims 7, 16,
`
`22, 32)
`
` “processing the baseband receive calibration RF signal to form an observable
`
`indicator of I-Q imbalance” (claims 7, 16, 22, 32)
`
` “phase-calibration cycling [system]” (claims 9, 24, 46, 61)
`
` “a slowly time-varying phase modulation/modulating [subsystem]” (claims 10,
`
`25, 47, 62, 74)
`
`20
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`IPR2018-00556
`Exhibit 2010 / Page 20
`
`

`

` “sampled phasor” (claims 12, 18, 27, 34, 49, 64, 71)
`
` “discrete phasor” (claims 13, 19, 28, 35, 50, 65, 72)
`
` “discrete phasor comprising jn or j–n” (claims 14, 20, 29, 36, 51, 66, 73)
`
` “successive calibration cycles [are used] to refine or maintain I-Q balance”
`
`(claims 15, 21, 30, 37, 52, 67)
`
`C. Means-Plus-Function Claims
`
`The following limitations recited in the asserted claims are means-plus-function terms
`
`governed by 35 U.S.C. § 112, sixth paragraph.
`
` “amplification means for amplifying the transmit signal at the intermediate frequency”
`
`(claim 31)
`
`The following limitations recited in the asserted claims are means-plus-function terms
`
`governed by 35 U.S.C. § 112, sixth paragraph, and are invalid because they fail adequately to
`
`disclose any structure for performing the claimed function, and thus fail to inform those of
`
`ordinary skill in the art about the scope of the invention with reasonable certainty and are
`
`indefinite under 35 U.S.C. § 112 second paragraph, for failing to particularly point out and
`
`distinctly claim the subject matter the applicants regard as their invention.
`
` “a processor for processing of the baseband receive signal as required for the normal
`
`function of the transceiver” (claims 7, 16, 22, 32, 44, 59, 69)
`
` “a processor for processing the baseband receive calibration RF signal to form an
`
`observable indicator of I-Q imbalance” (claims 7, 16, 22, 32)
`
` “means for preventing the signal path for injecting the calibration RF signal from
`
`permanently imparting an unfavorable net phase shift from baseband transmit to
`
`baseband receive” (claims 8, 23)
`
`21
`
`IPR2018-00556
`Exhibit 2010 / Page 21
`
`

`

`
`
`DATED: September 15, 2017
`
`Respectfully submitted,
`
`By: /s/ Jeffrey B. Plies
`Michael Barta – Lead Attorney
`DC Bar No. 431663
`michael.barta@dechert.com
`Dechert LLP
`1900 K Street, NW
`Washington, DC 20006
`(202) 261-3300
`
`Jeffrey B. Plies
`TX Bar No. 24027621
`jeffrey.plies@dechert.com
`Dechert LLP
`300 W. 6th Street, Suit