Paper 13
`Trials@uspto.gov
` 571-272-7822 Entered: February 19, 2019
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HTC CORPORATION and HTC AMERICA, INC.,
`Petitioner,
`
`v.
`
`INVT SPE LLC,
`Patent Owner.
`____________
`
`Case IPR2018-01557
`Patent 6,760,590 B2
`____________
`
`
`
`Before THU A. DANG, BARBARA A. BENOIT, and J. JOHN LEE,
`Administrative Patent Judges.
`
`BENOIT, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`

`

`IPR2018-01557
`Patent 6,760,590 B2
`
`
`I. INTRODUCTION
`This is a preliminary proceeding to decide whether to institute inter
`partes review of U.S. Patent No. 6,760,590 B2 (Ex. 1001, “the ’590 patent”
`or “the challenged patent”). See 35 U.S.C. § 314(a); 37 C.F.R § 42.4(a)
`(delegating authority to institute trial to the Board). Institution of an inter
`partes review is authorized by statute when “the information presented in the
`petition . . . and any response . . . shows that there is a reasonable likelihood
`that the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.” 35 U.S.C. § 314(a).
`HTC Corporation and HTC America, Inc. (collectively, “Petitioner”)
`filed a petition seeking inter partes review of claims 1–8 of U.S. Patent
`No. 6,760,590 B2. Paper 1 (“Pet.”). Patent Owner, INVT SPE LLC, filed a
`Preliminary Response. Paper 6 (“Prelim. Resp.”). After receiving
`authorization (Paper 8), Petitioner filed a Reply (Paper 10) to which Patent
`Owner filed a Sur-Reply (Paper 12).
`Although Petitioner initially sought to include claims 1, 2, 5, and 6 in
`its challenge, Patent Owner statutorily disclaimed those claims after the
`Petition was filed. See Ex. 2001. For the reasons discussed below,
`disclaimed claims 1, 2, 5, and 6 are no longer regarded as claims challenged
`in the Petition, leaving claims 3, 4, 7, and 8 as the only challenged claims.
`Upon consideration of the Petition and the Preliminary Response, we
`conclude the information presented does not show a reasonable likelihood
`that Petitioner would prevail in establishing the unpatentability of claims 3,
`4, 7, and 8 of the challenged patent. Accordingly, we deny institution of an
`inter partes review.
`
`
`
`2
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`

`

`IPR2018-01557
`Patent 6,760,590 B2
`
`
`A. Related Matters
`As required by 37 C.F.R. § 42.8(b)(2), each party identified various
`judicial or administrative matters that would affect or be affected by a
`decision in this proceeding. Pet. 1–2; Paper 4 (Patent Owner’s Mandatory
`Notices), 2–3.
`
`B. Statutory Disclaimer of Claims 1, 2, 5, and 6
`As noted above, Petitioner filed a petition challenging claims 1–8 of
`the ’590 patent. Pet. 3. Subsequently, Patent Owner filed a statutory
`disclaimer of claims 1, 2, 5, and 6. Ex. 2001; see Prelim. Resp. 2 n.1; see
`also 35 U.S.C. § 253 (indicating a patentee may disclaim claims). Patent
`Owner contends that inter partes review should not be instituted on the
`disclaimed claims in accordance with 37 C.F.R. § 42.107(e). Prelim.
`Resp. 2 n.1.
`We agree with Patent Owner. “A statutory disclaimer under
`35 U.S.C. § 253 has the effect of canceling the claims from the patent and
`the patent is viewed as though the disclaimed claims had never existed in the
`patent.” Guinn v. Kopf, 96 F.3d 1419, 1442 (Fed. Cir. 1996) (citing Altoona
`Publix Theatres, Inc. v. Am. Tri–Ergon Corp., 294 U.S. 477 (1935)). An
`inter partes review cannot be instituted on claims that have been disclaimed
`and no longer exist. See 37 C.F.R. § 42.107(e) (“No inter partes review will
`be instituted based on disclaimed claims.”). This conclusion is consistent
`with other panel decisions addressing this issue. See, e.g., Intuitive Surgical,
`Inc. v. Ethicon LLC, Case IPR2018-00935, Paper 9, 9–10 (PTAB Dec. 7,
`2018); Vestas-Am. Wind Tech. Inc. v. Gen. Elec. Co., Case IPR2018-01015,
`Paper 9, 12–14 (PTAB Nov. 14, 2018).
`
`
`
`3
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`

`IPR2018-01557
`Patent 6,760,590 B2
`
`
`Accordingly, we do not institute inter partes review on claims 1, 2, 5,
`and 6.
`
`C. The Challenged Patent
`The ’590 patent generally relates to transmission efficiency in mobile
`communications. Ex. 1001, 1:9–11, 1:15–18. The patent describes High
`Data Rate (“HDR”) as a known strategy to improve the transmission
`efficiency of a downlink from a base station to a communication terminal.
`Id. at 1:19–21 (Background Art). In HDR, a base station first transmits a
`pilot signal to a communication terminal. Id. at 1:28–31. The
`“communication terminal estimates the downlink channel quality using a
`CIR (desired carrier to interference ratio) based on the pilot signal, etc., and
`finds a transmission rate at which communication is possible.” Id. at 1:31–
`34. Based on the possible transmission rate, the “communication terminal
`selects a communication mode, which is a combination of packet length,
`coding method, and modulation method.” Id. at 1:34–39. The
`communication terminal then “transmits a data control rate (‘DCR’) signal
`indicating the communication mode to the base station.” Id. at 1:34–41.
`The base station sets a transmission rate for the communication terminal
`based on the DCR signal. Id. at 1:57–59. “Generally, DCR signals are
`represented by numbers from 1 to N, with a higher number indicating a
`proportionally better downlink channel quality.” Id. at 1:53–56.
`
`
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`4
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`

`IPR2018-01557
`Patent 6,760,590 B2
`
`
`Of the claims remaining in the ’590 patent, claims 3 and 7 are
`independent. Claim 3, reproduced below, is illustrative of the claimed
`subject matter:
`3. A communication terminal apparatus comprising:
`a measurer that measures a downlink channel quality and outputs
`information that is generated in association with said downlink
`channel quality and composed of a plurality of digits including
`an upper digit and an lower digit;
`a coder that encodes the information such that the upper digit is
`assigned a larger number of bits than the lower digit; and
`a transmitter that transmits the encoded information to a base
`station apparatus.
`
`D. The Asserted Grounds of Unpatentability
`Petitioner challenges under 35 U.S.C. § 1031 the patentability of
`claims 3, 4, 7, and 8 in the ’590 patent.
`References
`Padovani2 and Gils3
`Padovani, Gils, and Olofsson4
`
`Claims
`3, 4
`7, 8
`
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125
`Stat. 284, 287–88 (2011), revised 35 U.S.C. § 103 effective March 16, 2013.
`Because the challenged patent was filed before March 16, 2013, we refer to
`the pre-AIA version of § 103.
`2 PCT Publication No. WO 99/23844, published May 14, 1999 (Ex. 1009,
`“Padovani”).
`3 W. van Gils, “Design of error-control coding schemes for three problems
`of noisy information transmission, storage and processing,” dissertation,
`Eindhoven Univ. of Technology, Eindhoven, the Netherlands, 1988
`(Ex. 1010, “Gils”); see Pet. vii (Exhibit List).
`4 U.S. Patent No. 6,167,031, issued Dec. 26, 2000 (Ex. 1053, “Olofsson”).
`5
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`IPR2018-01557
`Patent 6,760,590 B2
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`
`II. DISCUSSION
`
`A. Legal Standards
`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`petitions to identify “with particularity . . . the evidence that supports the
`grounds for the challenge to each claim”)); see also 37 C.F.R. § 42.104(b)
`(requiring a petition for inter partes review to identify how the challenged
`claim is to be construed and where each element of the claim is found in the
`prior art patents or printed publications relied on). Petitioner cannot satisfy
`its burden of proving obviousness by employing “mere conclusory
`statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed.
`Cir. 2016).
`A claim is unpatentable under 35 U.S.C. § 103 if the differences
`between the claimed subject matter and the prior art are such that the subject
`matter, as a whole, would have been obvious at the time the invention was
`made to a person having ordinary skill in the art to which the subject matter
`pertains. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007). The
`question of obviousness is resolved on the basis of underlying factual
`determinations including (1) the scope and content of the prior art; (2) any
`differences between the claimed subject matter and the prior art; (3) the level
`of ordinary skill in the art; and (4) objective evidence of nonobviousness.5
`
`5 At this preliminary stage Patent Owner does not offer objective evidence of
`non-obviousness.
`
`6
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`IPR2018-01557
`Patent 6,760,590 B2
`
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). In determining the
`level of ordinary skill, various factors may be considered, including the
`“types of problems encountered in the art; prior art solutions to those
`problems; rapidity with which innovation are made; the sophistication of the
`technology; and educational level of active workers in the field.” In re
`GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (internal quotation and
`citation omitted).
`
`B. Level of Ordinary Skill in the Art
`Relying on declaration testimony of Paul Min, Ph.D., Petitioner
`contends that one of ordinary skill in the art “would have had a bachelor’s
`degree in electrical engineering, computer engineering, mathematics, or a
`related filed, and one to two years of experience in wireless/mobile
`communications or equivalent education and experience.” Pet. 8 (citing
`Ex. 1017 ¶ 53). Patent Owner does not dispute Petitioner’s proposed level
`of ordinary skill. For purposes of this Decision, we adopt the level of
`ordinary skill proposed by Petitioner.
`
`C. Claim Construction
`For a petition for inter partes review filed before November 13, 2018,
`claim terms in an unexpired patent are given their broadest reasonable
`construction in light of the specification of the patent in which they appear.
`37 C.F.R. § 42.100(b) (2018); see Cuozzo Speed Techs., LLC v. Lee, 136 S.
`Ct. 2131, 2144–46 (2016) (upholding the use of broadest reasonable
`
`
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`7
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`IPR2018-01557
`Patent 6,760,590 B2
`
`construction standard in inter partes review).6 Accordingly, we use the
`broadest reasonable construction standard for this proceeding.
`Under the broadest reasonable construction standard, claim terms are
`presumed to have their ordinary and customary meaning as would be
`understood by one of ordinary skill in the art in the context of the entire
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). An inventor may provide a meaning for a term that is different from
`its ordinary meaning by defining the term in the specification with
`“reasonable clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d
`1475, 1480 (Fed. Cir. 1994).
`Petitioner and Patent Owner contend that no terms in claims 3, 4, 7,
`and 8 require express construction for this Decision. Pet. 15–16; Prelim.
`Resp. 16; see Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`(Fed. Cir. 1999) (holding that “only those terms need be construed that are in
`controversy, and only to the extent necessary to resolve the controversy”);
`see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d
`1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter
`partes review). To the extent it is necessary to determine whether to
`institute an inter partes review, we discuss claim terms in the context of
`analyzing the asserted grounds.
`
`
`6 Rule 42.100(b) has been amended to provide that petitions filed on or after
`November 13, 2018, are analyzed under the same claim construction
`standard applicable in district courts. See 37 C.F.R. § 42.100(b); Changes to
`the Claim Construction Standard for Interpreting Claims in Trial
`Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51340
`(Oct. 11, 2018).
`
`8
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`

`IPR2018-01557
`Patent 6,760,590 B2
`
`
`D. Obviousness of Claims 3, 4, 7, and 8
`Petitioner asserts that the subject matter of claims 3 and 4 would have
`been obvious to one of ordinary skill in the art in view of Padovani and Gils
`and that the subject matter of claims 7 and 8 would have been obvious to one
`of ordinary skill in the art in view of Padovani, Gils, and Olofsson.
`Petitioner supports its challenges with citations to the references and to
`declaration testimony from Dr. Min (Exhibit 1017). Patent Owner opposes,
`with citations to the references and to declaration testimony from
`Raymond Nettleton, Ph.D. (Exhibit 2003).
`
`1. Disclosure of Padovani
`Padovani describes high rate packet data transmission in a data
`communication system capable of variable rate transmission. Ex. 1009,
`Abstract, 1:8–10. A mobile station can communicate with multiple base
`stations. Id. at 5:24–25. Padovani explains that, when a base station has
`data to transmit to a mobile station, the base station transmits a “paging
`message” on a control channel to the mobile station, which measures the
`signal-to-noise-and-interference ratio (C/I7) of the signal from the base
`station. Id. at 9:27–37. One example of a C/I measurement is 3.5 dB. Id. at
`23:34–24:2. A mobile station can select the best base station from which
`data is to be received “based on the largest C/I measurement.” Id. at 10:2–3.
`The mobile station transmits to the selected base station a data request
`message (“DRC message”) on a data request channel (“DRC channel”). Id.
`
`
`7 Ex. 1009, 5:35 (indicating C/I is an abbreviation for “signal-to-noise-and-
`interference ratio” of a signal).
`
`9
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`

`IPR2018-01557
`Patent 6,760,590 B2
`
`at 10:3–6. “The DRC message can contain the requested data rate or,
`alternatively, an indication of the quality of the forward link channel (e.g.,
`the C/I measurement itself, the bit-error-rate, or the packet-error-rate).” Id.
`at 10:6–9. The base station transmits to the mobile station at a maximum
`data rate supported, which depends on the C/I measurement by the mobile
`station. Id. at 24:26–31.
`To send a requested data rate to the base station, for example, the
`mobile station may identify one of multiple predetermined data rates by
`selecting a pre-assigned identifier to be included in a DRC message. Id. at
`27:28–30; see id. at 27:30–31 (indicating the mobile station selects one of
`the predetermined rates based on the C/I measurement). Padovani explains
`that, because the requested data rate needs to be sent to a base station to
`request the data rate, “a tradeoff is made between the number of supported
`data rates and the number of bits needed to identify the requested data rate.”
`Id. at 27:31–34. In Padovani’s example, “the number of supported data rates
`is seven and a 3-bit rate index is used to identify” which of the seven data
`rates is to be used. Id. at 27:35–36.
`Regardless of whether the DRC message includes a request for a
`predetermined data rate or includes the C/I measurement, the mobile station
`encodes the DRC message with an error correcting code in “a predetermined
`coding format” and then transmits the encoded message to the base station.
`Id. at 27:35–36, 45:15–33, Fig. 6.
`
`2. Disclosure of Gils
`Gils purports to be a doctoral dissertation titled “Design of error-
`control coding schemes for three problems of noisy information
`
`
`
`10
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`

`

`IPR2018-01557
`Patent 6,760,590 B2
`
`transmission, storage and processing,” which Petitioner contends was
`submitted to Eindhoven University of Technology in the Netherlands in
`1988. Ex. 1010, 1–28; see Prelim. Resp. 17. In data transmission and
`storage, “a desired level of error control can be guaranteed by using error-
`correcting codes.” Ex. 1010, 13. In contrast to error-correcting codes that
`“can be successfully applied . . . where all positions in a message word
`require equal protection against errors,” Gils describes the design of error-
`control coding for “the transmission and storage of messages in which
`different parts are of mutually different importance.” Id. at 18. “For
`example in transmitting numerical data, errors in the sign or in high-order
`digits are more serious than are errors in the low-order digits.” Id.
`According to Gils, “[l]inear codes that protect some positions in a
`message word against a larger number of errors than other ones are called
`Linear Unequal Error Protection (LUEP) codes.” Id. Gils identifies a
`problem with LUEP codes—“to find a LUEP code with a given dimension
`and separation vector such that its length is minimal and hence its
`information rate is maximal.” Id. at 18–19.
`Gils’ Table 1, which appears below, covers three pages in Gils’
`dissertation and provides example LUEP codes.
`
`
`8 For clarity, we refer to the exhibit page numbers in the bottom left corner
`of each page, not the dissertation page numbers in the upper corners of each
`page.
`
`11
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`

`

`IPR2018-01557
`Patent 6,760,590 B2
`
`
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`Table I[cou£|'nuedjs Th: separation anchors of of! Maury optimal
`
`
`LUEI’ cad” of 1mg”: [:99 than or aqua! Eu )5.
`
`7
`
`8
`
`4
`5
`6
`
`7
`
`a
`
`9
`
`
`
`15 1o:
`15
`11
`15
`12
`15
`13
`
`Tabie “continuedj: The separation vectors of a” binary optimal
`LUEP codes oflength less than ur Equal to 15.
`
`
`
`
`12
`
`
`
`
`

`

`IPR2018-01557
`Patent 6,760,590 B2
`
`Ex. 1010, 38–39. For each LUEP code, Table 1 identifies the length of the
`resulting encoded code word (“n”), the length of the input data to be
`encoded (“k”), and the error-correcting capability of the LUEP code. Id. at
`26, 36; see Pet. 23, Prelim. Resp. 19. A LUEP code presented in Table 1 is
`shown below.
`
`
`Ex. 1010, 37 (sixth code listed in Table 1); Prelim. Resp. 19. In this
`example, the length of the code word resulting from encoding (n) is 6 and
`the length of the data word to be encoded (k) is 4.
`
`3. Petitioner’s Contentions Regarding Independent Claim 3
`Consistent with the disclosure of Padovani described above, Petitioner
`relies on Padovani’s C/I measurement for the “information that is generated
`in association with said downlink channel quality and composed of a
`plurality of digits including an upper digit and an lower digit,” recited in
`independent claim 3. Pet. 32 (citing Ex. 1009, 9:34–37). Petitioner also
`indicates that Padovani teaches a C/I measurement in the form of a decimal
`integer portion and a decimal fraction portion (e.g., 3.5 dB) and uses that
`example measurement to explain its contentions. Ex. 1009, 23:34–24:2;
`Pet. 34 (citing Ex. 1009, 23:34–24:2). According to Petitioner, the decimal
`integer portion (e.g., 3 in 3.5 dB) teaches the recited upper digit and the
`decimal fraction portion (e.g., 5 in 3.5 dB) teaches the recited lower digit.
`Pet. 34. Regarding the recited transmitter limitation, Petitioner relies on
`Padovani’s data request message (DRC message) that includes the C/I
`measurement, is encoded, and is subsequently transmitted to the base station.
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`Pet. 39 (citing Ex. 1009, 10:3–9); Pet. 40 (citing Ex. 1009, 45:15–17,
`Fig. 6a).
`Petitioner contends a combination of Padovani and Gils teaches “a
`coder that encodes the information such that the upper digit is assigned a
`larger number of bits than the lower digit,” as recited in independent claim 3.
`Pet. 34–39. Based on antecedent basis of “the information,” the recited
`information that is encoded is “information that is generated in association
`with said downlink channel quality and composed of a plurality of digits
`including an upper digit and a lower digit,” which Petitioner contends is
`Padovani’s C/I measurement encoded in the DRC message sent from the
`mobile station to the base station. Pet. 34.
`Petitioner recognizes that Padovani does not teach encoding the C/I
`measurement in the DRC message in the manner required by the claims—
`“such that the upper digit is assigned a larger number of bits than the lower
`digit.” Pet. 34–35. Petitioner also acknowledges that Gils does not
`expressly teach the requisite coding of upper and lower digits. Pet. 35
`(contending one of ordinary skill in the art would have encoded Padovani’s
`C/I measurement in the DRC message with two particular coding schemes
`set forth among the many alternatives in Gils’ three-page Table 1).
`Petitioner, however, contends that one of ordinary skill in the art
`would have encoded Padovani’s C/I measurement in the DRC message with
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`two particular coding schemes9 set forth in Gils’ Table 1 to provide unequal
`error protection. Pet. 35 (citing Ex. 1017 ¶ 146). Out of the many LUEP
`codes provided in Table 1, Petitioner contends that one of ordinary skill in
`the art would have selected the (8,4) coding scheme and the (6,4) coding
`scheme to apply to Padovani’s C/I measurement. Pet. 37–38. Petitioner
`annotates the two particular coding schemes in the first page of Gils’ three-
`page Table 1,which is reproduced below.
`
`
`
`
`9 We use Petitioner’s language “coding schemes” for clarity. See, e.g.,
`Pet. 34 (“Gils derives a plurality of LUEP (n,k) coding schemes that when
`applied to a k-bit (binary) data word, result in n-bit code words.”); Pet. 35
`(“[I]t would have been obvious to a POSITA to have combined Padovani
`and Gils such that the DRC encoder of Padovani could be configured to
`encode the C/I measurement in accordance with one or more of the coding
`schemes set forth [by] Gils.”).
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`Pet. 37 (Petitioner’s highlighting the (n,k) of two coding schemes with a red
`rectangle on the first page of Gils’ three-page Table 1).
`Petitioner further contends that one of ordinary skill in the art would
`have applied each of the two coding schemes in a particular manner. Pet.
`37–38. In particular, Petitioner contends that one of ordinary skill in the art
`would have selected the (8,4) coding scheme to apply to decimal integer
`portion (3) of Padovani’s C/I measurement (3.5 dB), which would have
`resulted in an encoded code word having 8-bits. Pet. 37–38. And, according
`to Petitioner, one of ordinary skill in the art would have selected the (6, 4)
`coding scheme to apply to the decimal fraction portion (5) of Padovani’s C/I
`measurement (3.5 dB), which would have resulted in an encoded code word
`having 6-bits. Pet. 38. According to Petitioner, the selection of those two
`particular coding schemes from the many presented in Gils’ Table 1 and
`applied to the two portions in the manner proposed by Petitioner would
`result in Padovani’s C/I measurement being encoded “such that the upper
`digit is assigned a larger number of bits than the lower digit,” as recited in
`independent claim 3, because the resulting 8-bit code word has more bits
`than the resulting 6-bit code word. Pet. 38. Petitioner contends that one of
`ordinary skill in the art would have done so because one of ordinary skill in
`the art “would have known to select the two coding schemes that could be
`used to derive code words for a 4-bit data word.” Pet. 38 (citing Ex. 1017
`¶ 152).
`
`4. Analysis
`As explained above, Petitioner relies on a combination of Padovani
`and Gils for teaching the recited “a coder that encodes the [quality]
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`information such that the upper digit is assigned a larger number of bits than
`the lower digit.” Pet. 34–39. Petitioner acknowledges, expressly or by its
`arguments, that neither Padovani nor Gils teaches encoding information
`composed of an upper digit and a lower digit “such that the upper digit is
`assigned a larger number of bits than the lower digit.” Pet. 34–39. Rather,
`Petitioner contends that one of ordinary skill in the art would have applied
`two particular coding schemes listed in Gils’ Table 1 in a particular manner
`to Padovani’s C/I example measurement of 3.5 dB, which would have
`resulted in Padovani’s C/I measurement of being encoded such that “the
`upper digit is assigned a larger number of bits than the lower digit,” as
`required by independent claim 3. Petitioner, however, has not adequately
`explained a reason one of ordinary skill in the art would have done so for the
`following reasons.
`a. Gils Does Not Teach or Suggest Using Together the
`Two Coding Schemes Selected from Table 1
`Petitioner does not identify any passage or combination of passages in
`Gils that teaches or suggests using two coding schemes together from Gils’
`Table 1 to encode information, much less using the two particular coding
`schemes identified by Petitioner and applied in the particular manner
`required by the claims—using a LUEP coding scheme that results in a
`higher number of bits for the decimal integer portion of Padovani’s C/I
`measurement and a different LUEP coding scheme that results in a lower
`number of bits for the decimal fraction portion of Padovani’s C/I
`measurement. Rather, Petitioner relies on a general statement from Gils
`about one problem in the design of error-control coding schemes.
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`[One problem is] the transmission and storage of messages in
`which different parts are of mutually different importance. So it
`is natural to give parts of mutually different importance different
`protections against errors. This can be done by using different
`coding schemes for the different parts, but more elegantly by
`using a single so-called Unequal Error Protection coding
`scheme.
`Ex. 1010, 6 (emphasis added); Pet. 39 (citing Ex. 1010, 6; Ex. 1012, 600
`(repeating statements in Ex. 1010)). From this passage, Petitioner contends
`that one of ordinary skill in the art would have used together two LUEP
`coding schemes from Table 1. Pet. 38–39. This passage, however, does not
`teach or suggest selecting two of the unequal error protection (LUEP) coding
`schemes, such as those in Table 1, to be applied to information to be
`encoded. Rather, a plain reading of this passage indicates that generally
`different error protection coding schemes could be used for different parts of
`a message but that one LUEP code accomplishes the same purpose. This
`passage of Gils does not teach using two LUEP codes for different parts of a
`message. Rather, this passage teaches that using a single unequal error
`protection code scheme (like the LUEP coding schemes shown in Gils’
`Table 1) is preferred to using different coding schemes for different parts of
`information. Ex. 1010, 6. This understanding of Gils’ passage is supported
`further by testimony of Dr. Nettleton, Patent Owner’s declarant:
`By describing a single LUEP coding scheme as “more elegant[],”
`Gils directs [one of ordinary skill in the art] to use a single LUEP
`code and not to employ different coding schemes from Table 1
`for different portions of a single data word.
`Ex 2003, ¶ 30.
`We recognize that, based on this passage in Gils’ (Ex. 1010, 6),
`Petitioner’s declarant, Dr. Min, testifies that one of ordinary skill in the art
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`“would have known to encode different portions of data to be encoded in
`accordance with coding schemes that result in different code word minimum
`distances.” Ex. 1017 ¶ 153; see Pet. 38–39 (citing Ex. 1017 ¶ 153).
`Dr. Min’s general statement, however, does not address adequately why one
`of ordinary skill in the art would have used together two unequal error
`protection schemes from Gils’ Table 1. Moreover, Dr. Min also testified
`that “a single UEP coding scheme could also be used depending upon how
`[one of ordinary skill in the art] would have wanted to implement unequal
`error protection.” Ex. 1017 ¶ 153; see Pet. 39 (citing Ex. 1017 ¶ 153). As
`such, Dr. Min acknowledges that a single unequal error protection coding
`scheme could be used as well as applying different coding schemes to
`different parts of a message. Here, Dr. Min’s testimony that a single
`unequal error protection coding scheme could be used further undermines
`Petitioner’s position that one of ordinary skill in the art would have used two
`unequal error protection coding schemes identified in Gils’ Table 1.10
`We also note that Dr. Min cites a two-column page of an IEEE paper
`(Exhibit 1012) without particularity or explaining the relevance of that
`citation to his declaration testimony. Ex. 1017 ¶ 153 (citing Ex. 1012, 600).
`Because Dr. Min has not provided an explanation regarding the relevance of
`
`
`10 We also note in passing that Dr. Min cites a two-column page of an IEEE
`paper (Exhibit 1012) without particularity or explaining the relevance of that
`citation to his declaration testimony. Ex. 1017 ¶ 153 (citing Ex. 1012, 600).
`Because Dr. Min has not provided an explanation regarding the relevance of
`the cited portion, we accord little weight to Dr. Min’s citation to Exhibit
`1012.
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`the cited portion, we accord little weight to Dr. Min’s c