Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 40
`Date: December 5, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`CONTINENTAL AUTOMOTIVE SYSTEMS, INC.,
`Petitioner
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`_______________
`
`IPR2022-00974
`Patent 8,953,641 B2
`_______________
`
`
`Before AMBER L. HAGY, JASON W. MELVIN, and
`AARON W. MOORE, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`DECISION
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`571-272-7822
`
`
`
`
`
`Paper 40
`Date: December 5, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`CONTINENTAL AUTOMOTIVE SYSTEMS, INC.,
`Petitioner
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`_______________
`
`IPR2022-00974
`Patent 8,953,641 B2
`_______________
`
`
`Before AMBER L. HAGY, JASON W. MELVIN, and
`AARON W. MOORE, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`DECISION
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`IPR2022-00974
`Patent 8,953,641 B2
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`
`INTRODUCTION ................................................................................ 1
`A.
`Related Matters .......................................................................... 2
`B.
`The ’641 Patent .......................................................................... 3
`ANALYSIS .......................................................................................... 7
`A.
`Principles of Law ....................................................................... 7
`B.
`Level of Ordinary Skill in the Art .............................................. 7
`C.
`Claim Construction .................................................................... 8
`D. Overview of the Primary References ......................................... 9
`1.
`Hwang .............................................................................. 9
`2. McFarland ...................................................................... 10
`E. Motion to Exclude .................................................................... 11
`1.
`Paragraph 31 of the Supplemental Declaration ............. 11
`2.
`Paragraph 35 of the Supplemental Declaration ............. 17
`3.
`Hwang ............................................................................ 17
`Obviousness in view of Hwang and McFarland ...................... 21
`1.
`The Combination ........................................................... 23
`2.
`Expectation of Success .................................................. 27
`3.
`Legitimacy of Hwang .................................................... 30
`4.
`Unpatentability Conclusion ........................................... 31
`III. ORDER ............................................................................................... 32
`
`
`
`
`F.
`
`ii
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`
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`IPR2022-00974
`Patent 8,953,641 B2
`
`I.
`
`INTRODUCTION
`
`Continental Automotive SystemsInc. (“Petitioner”) filed a Petition
`
`(Paper1, “Pet.”) challenging the patentability of claims 6—9, 11, 13, 14, 18,
`
`22-25, 27, 28, 32, and 36—38 (“the challenged claims’) of U.S. Patent No.
`
`8,953,641 B2 (Ex. 1001, “the ’641 patent’), whichis assigned to Intellectual
`
`Ventures II LLC (“Patent Owner’”).!
`
`ThePetition presented the following grounds(see Pet. 5):
`
`
`
`Claim(s) Challenged|35 U.S.C. § Reference(s)/Basis
`
`
`
`6-9, 11, 13, 14, 18,
`22-25, 27, 28, 32,
`36-38
`
`6,7, 8,9
`
`103(a)
`
`Hwang,” McFarland?
`
`103(a)
`
`Hwang, McFarland, Miyoshi*
`
`The primary references, Hwang and McFarland, were not before the
`
`Examiner during the original prosecution.
`
`Patent Ownerfiled a Preliminary Response (Paper6), and we
`
`instituted a trial on the asserted groundsof unpatentability (see Paper 11,
`
`59). Duringthe trial, Patent Ownerfiled a Response,Petitioner filed a
`
`Reply, and Patent Ownerfiled a Sur-reply. See Paper 18 (“PO. Resp.”):
`
`Paper 19 (“Reply”); Paper 27 (“Sur-reply”).
`
`' Toyota Motor Corp. was onthe Petition but settled with Patent Owner and
`wasterminated from the proceeding. See Paper 24.
` Inseok Hwanget al., 4 New Frame Structurefor Scalable OFDMA
`Systems, IEEE C802.16d-04/19 (2004).
`> U.S. Pub. App. 2002/0006167 A1.
`*U.S. Patent No. 7,372,909 B2.
`
`
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`IPR2022-00974
`Patent 8,953,641 B2
`Petitioner relies on testimony from Dr. Robert Akl, D.Sc.
`See Ex. 1003 (“Akl Declaration”); Ex. 1021 (“Supplemental Akl
`Declaration”). Patent Owner relies on testimony from Dr. Gary Lomp.
`See Ex. 2001 (“Lomp Declaration”); Ex. 2015 (“Second Lomp
`Declaration”).
`We conducted an oral hearing on September 6, 2023, and a copy of
`the transcript is included in the record. See Paper 39 (“Tr.”).
`We now determine, for the reasons explained below, that Petitioner
`has shown by a preponderance of the evidence that claims 6–9, 11, 13, 14,
`18, 22–25, 27, 28, 32, and 36–38 of the ’641 patent are unpatentable.
`Related Matters
`A.
`Petitioner identifies six civil actions as related matters. See Pet. 69–
`70. Petitioner also identifies the following inter partes reviews as related:
`IPR2018-01689 (concerning the ’641 patent); IPR2018-01770 (concerning
`the ’641 patent); IPR2015-01664 (concerning US 7,787,431 B2); and
`IPR2014-01995 (concerning US 7,787,431 B2). Patent Owner identifies
`three of the six civil actions identified by Petitioner, and two of the four inter
`partes reviews identified by Petitioner. See Paper 4, 2.
`We instituted review in IPR2018-01689 to consider challenges to
`claims of the ’641 patent based on references called Li, Husted, and Chang.
`See IPR2018-01689, Paper 15, 62. We instituted review in IPR2018-01770
`to consider challenges to claims of the ’641 patent based on the Hwang and
`McFarland references that are used in this petition. See IPR2018-01770,
`Paper 18, 64. Both cases terminated before reaching a final written decision.
`See IPR2018-01689, Paper 22; IPR2018-01770, Paper 24.
`
`2
`
`
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`IPR2022-00974
`Patent 8,953,641 B2
`The ’641 Patent
`B.
`The ’641 patent is titled “Methods and Apparatus for Multi-Carrier
`Communication with Variable Channel Bandwidth.” The patent explains
`that it is ideal for a broadband wireless communication device to roam from
`one part of the world to another, but that “wireless communication spectra
`are heavily regulated and controlled by individual countries or regional
`authorities.” Ex. 1001, 1:31–35. The patent further explains that, even
`within the same country or region, a wireless operator may own and operate
`on a broadband spectrum that is different from other operators. Id. at 1:37–
`40. The patent concludes that it would be desirable to have “[a] practical
`and feasible solution for multi-carrier communication with variable channel
`width.” Id. at 2:1–3.
`The ’641 patent describes how a “variable channel bandwidth is
`realized by adjusting the number of usable subcarriers, whose spacing is set
`constant.” Ex. 1001, 4:41–42. This is shown in a table of sample system
`parameters, which lists four different operating bandwidths, 10MHz, 8MHz,
`6MHz, and 5MHz, each with its own corresponding number of subcarriers,
`800, 640, 480, and 400:
`
`Table of Sample System Parameters
`
`
`
`3
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`IPR2022-00974
`Patent 8,953,641 B2
`Figure 6 of the ’641 patent, reproduced below, shows the claimed
`concept schematically:
`
`
`
`“FIG. 6 illustrates a variable channel bandwidth being
`realized by adjusting a number of usable subcarriers, whose
`spacing is set constant.” Ex. 1001, 2:20–22.
`The figure above shows “[a] core-band, substantially centered at the
`operating center frequency, [that] is defined as a frequency segment that is
`not greater than the smallest operating channel bandwidth among all the
`possible spectral bands that the receiver is designed to operate with.”
`Ex. 1001, 4:66–5:3. The ’641 patent describes how “a set of data channels
`and their related dedicated control channels are placed within the [core-
`band] to maintain basic radio operation” and that “[w]hen entering into the
`network, a mobile station starts with the primary state and transits to the
`normal full-band-width operation to include the sidebands for additional data
`and radio control channels.” Id. at 5:6–17.
`Claims 6, 11, and 25 are independent. Claim 6 is directed to a
`variable bandwidth communication method in which a mobile station
`
`4
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`IPR2022-00974
`Patent 8,953,641 B2
`receives synchronization information in a core-band, where the core-band is
`substantially centered at an “operating center frequency” and includes
`subcarrier groups that include subcarriers with a fixed spacing. The number
`of subcarriers is adjustable to realize a “variable band,” the core-band is the
`same for all bandwidths, and the core-band is not greater than the smallest
`bandwidth. The mobile station and the base station are synchronized using
`the synchronization information, and the mobile station receives control and
`data channels using the variable band.
`Claim 11 is directed to a mobile station, and claim 25 is directed to a
`corresponding method performed by a mobile station. These claims focus
`on receipt of “broadcast information” by a mobile station, reciting that the
`broadcast information is in a first band, with a first bandwidth, carried by a
`group of subcarriers that have a fixed spacing. A second bandwidth is
`determined based on the broadcast information, where the second bandwidth
`is greater than and contains the first, and a data channel is carried by a
`subcarrier group of the second band.
`For ease of reference, independent claims 6 and 11 are reproduced in
`full below:
`6. A variable bandwidth communication method, comprising:
`receiving synchronization information by a cellular mobile
`station from a base station in an orthogonal frequency
`division multiple access (OFDMA) core-band, wherein the
`core-band is substantially centered at an operating center
`frequency and the core-band includes a first plurality of
`subcarrier groups where each subcarrier group includes a
`plurality of subcarriers having a fixed spacing between
`adjacent subcarriers, wherein a number of useable
`subcarriers is adjustable to realize a variable band, wherein
`the number of useable subcarriers is determined based on
`plurality of operating channel bandwidths, the core-band
`
`5
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`IPR2022-00974
`Patent 8,953,641 B2
`defined as a frequency segment with a bandwidth that is not
`greater than a smallest operating channel bandwidth among
`the plurality of operating channel bandwidths, the core-band
`having a same value for the plurality of operating channel
`bandwidths, wherein the cellular mobile station is
`configured to operate within the plurality of operating
`channel bandwidths;
`synchronizing the cellular mobile station with the base station
`using the received synchronization information; and
`receiving control and data channels by the cellular mobile
`station using the variable band including a second plurality
`of subcarrier groups, wherein the variable band includes at
`least the core-band.
`11. A mobile station, comprising:
`circuitry configured to receive broadcast information to access
`an orthogonal frequency division multiple access (OFDMA)
`system, wherein the broadcast information is received only
`in a first band having a first bandwidth and the broadcast
`information is carried by a plurality of groups of subcarriers
`with each group having a plurality of contiguous subcarriers;
`circuitry configured to determine a second bandwidth of a
`second band that is associated with the OFDMA system
`based upon the broadcast information received in the first
`band, wherein a second bandwidth of the second band is
`greater than the first bandwidth of the first band, wherein the
`first band is contained within the second band,
`wherein a data channel is carried by at least one subcarrier
`group of the second band,
`wherein the plurality of contiguous subcarriers have fixed
`spacing,
`wherein a number of usable subcarriers is adjustable to realize a
`variable band, wherein the number of usable subcarriers is
`determined based on a plurality of operating channel
`bandwidths, and
`wherein the first band is defined as a frequency segment with a
`bandwidth that is not greater than a smallest operating
`
`6
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`
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`IPR2022-00974
`Patent 8,953,641 B2
`channel bandwidth among the plurality of operating channel
`bandwidth, the first band having a same value for the
`plurality of operating channel bandwidths wherein the
`mobile station is configured to operate within the plurality of
`operating channel bandwidths.
`II. ANALYSIS
`
`A.
`
`Principles of Law
`A patent claim is unpatentable under 35 U.S.C. § 103(a) 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 said
`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) when in evidence, objective
`evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1,
`17–18 (1966).
`Level of Ordinary Skill in the Art
`B.
`The level of skill in the art is a factual determination that provides a
`primary guarantee of objectivity in an obviousness analysis. See Al-Site
`Corp. v. VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing
`Graham, 383 U.S. at 17–18; Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714,
`718 (Fed. Cir. 1991)).
`Petitioner contends that a person of ordinary skill in the art at the time
`of the alleged invention “would have had a Bachelor of Science in electrical
`engineering, computer engineering, or an equivalent field as well as three
`years of experience in wireless communication technology, or a master’s
`
`7
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`IPR2022-00974
`Patent 8,953,641 B2
`degree in electrical engineering, or other equivalent degree.” Pet. 6–7
`(citing Ex. 1003 ¶¶ 38–40). Patent Owner has not proposed an alternative,
`and, having reviewed the arguments and evidence in the full record, we
`adopt Petitioner’s definition, as we did in the Institution Decision, finding it
`consistent with the ’641 patent and the asserted prior art.
`Claim Construction
`C.
`In interpreting the claims of the ’641 patent, we “us[e] the same claim
`construction standard that would be used to construe the claim[s] in a civil
`action under 35 U.S.C. [§] 282(b).” See 37 C.F.R. § 42.100(b) (2021). The
`claim construction standard includes construing claims in accordance with
`the ordinary and customary meaning of such claims as would have been
`understood by one of ordinary skill in the art in light of the written
`description and the prosecution history pertaining to the patent. See id.;
`Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc).
`Petitioner proposes a construction for the term “radio network
`information” in dependent claims 9, 14, and 28. See Pet. 7. Patent Owner
`has not proposed a specific construction for any claim term and has not
`disputed Petitioner’s proposed construction for “radio network information.”
`In view of the analysis below, we determine that we need not
`expressly construe “radio network information,” and that no other claim
`construction is necessary. See Nidec Motor Corp. v. Zhongshan Broad
`Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that
`construction is needed only for terms that are in dispute, and only as
`necessary to resolve the controversy).
`
`8
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`IPR2022-00974
`Patent 8,953,641 B2
`D. Overview of the Primary References
`Hwang
`1.
`Hwang is an IEEE submission titled “A New Frame Structure for
`Scalable OFDMA System.” Petitioner’s declarant, Randall Schwartz,
`testified at length about how Hwang was made public in connection with
`Session #30 of the IEEE 802.16 Working Group that took place in Orlando,
`Florida on March 15–18, 2004. See Ex. 1010 ¶¶ 4–21.
`Hwang proposes a new frame structure to “improve system
`performance under scalable bandwidth.” Ex. 1004, 1. Table 1 of Hwang is
`reproduced below:
`
`
`
`
`
`Hwang’s System Parameters
`
`This table shows the system parameters chosen to support a scalable
`bandwidth (the “System BW”) of 2.5, 5, 10, or 20 MHz. See Ex. 1004, 2–3.
`Petitioner indicates that “tone spacing” in the table means subcarrier spacing
`(see Pet. 9), and Patent Owner does not dispute that characterization. Thus,
`Table 1 of Hwang shows four different system operating bandwidths,
`2.5 MHz, 5 MHz, 10 MHz, and 20 MHz, with a scaling number of useable
`subcarriers and a common and fixed subcarrier spacing.
`
`9
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`IPR2022-00974
`Patent 8,953,641 B2
`2. McFarland
`McFarland is a U.S. patent application directed to communication
`systems and networks that use multi-carrier protocols, including orthogonal
`frequency division multiplexing (OFDM), and to techniques for
`communicating using such protocols. See Ex. 1005 ¶ 3. McFarland
`explains that systems of that type “take a relatively wide bandwidth
`communication channel and break it into many smaller frequency sub-
`channels,” and that the narrower sub-channels “are then used simultaneously
`to transmit data at a high rate.” Id. ¶ 5.
`McFarland discloses a control unit that accepts several inputs, on the
`basis of which it will determine the appropriate symbol rate (subcarrier
`spacing5) and the number of carriers to use. See id. ¶ 45. The combination
`of symbol rate and number of carriers defines an “operating mode.” Id.
`McFarland discloses several ways to change the number of carriers in
`active use. See Ex. 1005 ¶ 38. In one embodiment, a single iFFT (inverse
`Fast Fourier Transform) processor is large enough to handle the maximum
`number of carriers that might be required, and a subset of carriers can be
`used by inputting zero magnitude signals on the unused carriers. See id.
`¶ 39. Another embodiment uses multiple complete iFFT processors of
`various sizes, and, for a given transmission, only one of the processors
`would be used. See id. ¶ 40. In another embodiment, a single iFFT
`processor is used and can disable portions of its own internal circuitry
`depending on how many carriers are needed. See id. ¶ 41.
`
`
`5 Petitioner refers to “symbol rate” as equivalent to subcarrier spacing.
`Pet. 26. Patent Owner does not dispute that characterization. We use the
`terms interchangeably.
`
`10
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`IPR2022-00974
`Patent 8,953,641 B2
`McFarland explains that “all nodes may not support all modes,” and
`that “[b]roadcast messages, or any other messages that need to be received
`by multiple nodes, must be transmitted in a mode that all nodes to which
`they are directed are able to receive.” Ex. 1005 ¶ 60. McFarland also
`describes how “[o]ne method for communicating the mode of operation . . .
`is to signal it in the header of the packet,” that “it might be preferred to send
`a first short exchange establishing the mode at which the data
`communication will take place,” and that “[t]his first short exchange would
`be done with a base mode of operation that all nodes support.” Id. at ¶ 62.
`McFarland also describes how, “when a new node enters a network, it could
`learn of the operating mode by . . . receiving a packet header or special
`packet” and that “[t]he packet header or special packet could be transmitted
`in some base mode that all nodes are guaranteed to support.” Id. at ¶ 63.
`E. Motion to Exclude
`Patent Owner moves to exclude (1) paragraphs 31 and 35 of Dr. Akl’s
`Supplemental Declaration, and (2) Hwang. See Paper 33 (“Mot. to
`Exclude”). For the reasons given below, the motion is denied.
`Paragraph 31 of the Supplemental Declaration
`1.
`Patent Owner argues that “Dr. Akl’s Original Invalidity Theory was
`limited to modifying the ‘header’ portion or ‘broadcast information’ of
`Hwang’s frame” but “Dr. Akl’s Supplemental Declaration . . . proposes a
`New Invalidity Theory where the original Hwang frame in its entirety (rather
`than just the Preamble and SICH) is constrained to the 2.5 MHz band
`regardless of the operating mode, and the combination becomes untethered
`from McFarland’s ‘short header.’” Mot. to Exclude 1–3. According to
`
`11
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`IPR2022-00974
`Patent 8,953,641 B2
`Patent Owner, “Dr. Akl’s New Invalidity theory marks a significant shift in
`theory, and exceeds the scope of a proper reply.” Id. at 5.
`We do not agree that there is a “New Invalidity Theory.” Dr. Akl’s
`contention is that the map burst location block would be located in a
`bandwidth supported by the mobile station6 with which the base station is
`communicating. This is consistent with the Petition and original declaration.
`See Pet. 37 (contending that it would have been “obvious to modify Hwang
`to provide the ‘header’ portion of Hwang’s frame . . . within the base mode
`(i.e., 2.5 MHz system bandwidth) and the remainder of the frame within an
`operating mode (i.e., one of 2.5, 5, 10, or 20 MHz))”) (emphasis added;
`quoting Ex. 1003 ¶ 126).
`In the case of a legacy mobile station limited to 2.5 MHz, the only
`available operating mode would be the 2.5 MHz bandwidth, so the
`preamble, SICH, and data blocks (including the map burst location block)
`would all be communicated in that bandwidth. In the case of a 5 MHz
`mobile station, the preamble and SCIH would be sent in the 2.5 MHz
`bandwidth and then, if desired, the 5 MHz operating mode could be used, in
`which case the data blocks (including the map burst location block) would
`lie in the 5 MHz bandwidth.
`There appears to be some confusion arising from the diagrams the
`parties are using to illustrate the arguments. Patent Owner created diagrams
`for the Preliminary Response that were intended to support an argument that
`Hwang’s “uniform frame structure” would be lost if the bandwidth changed.
`
`
`6 For clarity, we will use the claim terms “base station” and “mobile station”
`even though some of the references use different words (e.g., “node” or
`“subscriber station”) to refer to those elements of the wireless system.
`
`12
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`Patent 8,953,641 B2
`See Prelim. Resp. 17–19. Then, in the full Response (see PO Resp. at 19),
`Patent Owner used one of those figures, depicting a “5 MHz Modified
`Frame,” to argue that a 2.5 MHz mobile station would not be able to read the
`burst map outlined in red:
`
`
`
`Patent Owner’s Drawing of a “5 MHz Modified Frame”
`
`That drawing, however, shows how the combination would work for a
`5 MHz mobile station, not a 2.5 MHz mobile station. The 5 MHz mobile
`station would receive the preamble in the 2.5 MHz base mode and then
`could switch to 5 MHz operating mode to receive the map and traffic data.
`A 2.5 MHz mobile station, however, would not attempt to switch to 5 MHz,
`because it cannot communicate at that larger bandwidth, meaning that the
`problems Patent Owner identifies would not exist in the combination. The
`2.5 MHz mobile station would stay in the 2.5 MHz band––its only operating
`mode––as shown in the figure below from page 19 of the Preliminary
`Response:
`
`Patent Owner’s Drawing of a”2.5 MHz Frame”
`
`13
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`Patent 8,953,641 B2
`At his deposition, Dr. Akl testified that there would have to be a map
`burst location block within the 2.5 MHz band for the legacy mobile stations,
`but that there also could be additional map bursts and traffic bursts outside
`the 2.5 MHz band. See Ex. 2020, 63:1–65:15. He depicted that on page 17
`of his Supplemental Declaration, as follows:
`
`
`Figure from Page 17 of the Akl Supplemental Declaration
`
`We find it unclear from this figure and the associated explanation in
`the Declaration (see Ex. 1038 ¶¶ 30–32) how the map burst and traffic burst
`blocks in green and blue factor in, because they cannot be received by the
`2.5 MHz device.
`
`14
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`Patent 8,953,641 B2
`Dr. Akl testified that “McFarland teaches that necessary messages,
`e.g., including broadcast messages, or any other messages that need to be
`received by multiple nodes, ‘must be transmitted in a mode that all nodes to
`which they are directed are able to receive,’ that is, the base mode (e.g., the
`core-band).” Ex. 1038 ¶ 31 (quoting Ex. 1004 ¶ 60). He then states that one
`“would understand that because Hwang’s AAS_MAP_Burst_Location_IE
`contains system information and an index of where the MAP bursts are
`going to be, it is a message that needs to be received by multiple nodes, and
`thus is a necessary message that must be transmitted in a mode that all nodes
`to which they are directed are able to receive.” Id.
`It does not appear, however, that the blue and green blocks could be
`part of “broadcast messages” intended for a 2.5 MHz mobile station because
`they cannot be received by that mobile station. We thus do not agree that
`McFarland would suggest including map burst blocks in the 2.5 MHz band
`because they are “broadcast messages.” We also fail to see why the map
`burst locations would need to be received by multiple nodes, as that seems to
`be data that is tailored to the mobile device with which the base station is
`communicating.7
`However, we do find it readily apparent that if the base station and the
`mobile station have determined to communicate using a particular
`bandwidth, as contemplated by the combination presented in the Petition, the
`map bursts necessarily would be included in that bandwidth in order for the
`communication scheme to be successful. The mobile station would need to
`
`
`7 For example, the blue MAP burst blocks in Dr. Akl’s figure can’t be
`received by the 2.5 MHz handset.
`
`15
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`IPR2022-00974
`Patent 8,953,641 B2
`be able to read the map burst location data to process the traffic bursts.
`See Ex. 1003 ¶ 157.
`Thus, although we find the portions of Dr. Akl’s testimony about the
`blue and green blocks to be insufficiently explained and supported, we find
`that one of ordinary skill in the art would have understood that the map burst
`location blocks would be transmitted within the 2.5 MHz band for a mobile
`station that was limited to 2.5 MHz, and within the bandwidth of any other
`operating mode in use between the base station and a mobile station with a
`broader operating mode.
`Patent Owner also argues that Dr. Akl improperly changed the
`mapping of the claim language “variable band” from “Map Bursts and
`Traffic Bursts within the frame shown in Figure 6 of Hwang,” as in the
`Petition, to “Dr. Akl’s new blue and green boxes.” Mot. to Exclude 3. We
`find this argument unpersuasive because the variable band is simply the set
`of bandwidths available in the system. See, e.g., Claim 6 (“[a] variable
`bandwidth communication method . . . wherein a number of useable
`subcarriers is adjustable to realize a variable band”). In the combination, the
`claimed “variable band” is the variable bandwidth channel consisting of the
`2.5, 5, 10, and 20 MHz bands of Hwang. In Dr. Akl’s figure, the central
`white portion is the base mode portion of the variable band, and the entire
`height (the central white portion plus the blue and green boxes) represents a
`wider bandwidth available in the variable band for mobile stations that can
`support it.
`
`Patent Owner additionally argues that Dr. Akl originally located the
`map burst block at the edge of the frame bandwidth, but then changed
`position, locating the map burst block in the middle of the bandwidth.
`
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`IPR2022-00974
`Patent 8,953,641 B2
`See Mot. to Exclude Reply 2–3. We find this unpersuasive because, in each
`case, the map burst block is located at the “beginning” of the bandwidth that
`is usable by the mobile station with which the base station is
`communicating. We thus do not agree Dr. Akl’s position on that changed.
`Because we find that paragraph 31 does not propose a new invalidity
`theory, we decline to exclude it.
`Paragraph 35 of the Supplemental Declaration
`2.
`Patent Owner argues that paragraph 35 of Dr. Akl’s Supplemental
`Declaration should be excluded because his “Original Declaration failed to
`address how his proposed modifications to Hwang’s downlink subframe
`would affect Hwang’s uplink subframe.” Mot. to Exclude 8.
`This argument is also not persuasive. The original declaration did not
`need to address uplink because the claims do not have limitations concerning
`uplink. That issue was first raised by Patent Owner in the Response (see PO
`Resp. 25–30), and it was appropriate for Dr. Akl to then respond. Moreover,
`as with the map burst location block, we conclude that there is not a problem
`with the location of the ranging subchannel when the combination is
`properly understood, because it clearly contemplates the base station and
`mobile station communicating in an operating mode that each can use.
`For these reasons, we decline to exclude paragraph 35 of Dr. Akl’s
`Supplemental Declaration.
`Hwang
`3.
`Patent Owner argues that Hwang must be excluded because it is not
`properly authenticated. See Mot. to Exclude 4–5. We do not agree.
`Fed. R. Evid. 901(a), which governs authentication, requires that the
`proponent “produce evidence sufficient to support a finding that the item is
`
`17
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`IPR2022-00974
`Patent 8,953,641 B2
`what the proponent claims it is.” Notably, “[t]he burden of proof for
`authentication is slight.” Lexington Ins. Co. v. W. Pennsylvania Hosp.,
`423 F.3d 318, 328 (3d Cir. 2005).
`Mr. Schwartz testified that “[t]he IEEE 802.16 Working Group is a
`public forum for collaboration and development of ideas among interested
`parties to develop standards and recommended practices to support the
`development and deployment of broadband Wireless Metropolitan Area
`Networks.” Ex. 1010 ¶ 4. He explained that the working group “organized
`meetings periodically in conjunction with other IEEE 802 groups,” and that
`“[a]s a matter of general practice, the . . . meetings that were organized were
`open to members and the general public.” Id. ¶ 5.
`He further testified that “[a]s a matter of general practice, documents
`and contributions were submitted before or during the IEEE 802.16 Working
`Group meetings,” and that “[d]uring the . . . meetings, each of the submitted
`documents and contributions was presented, discussed, and when required,
`action was taken to determine the acceptance or viability of the contribution
`to the standard.” Id. ¶ 6. He explained how “[d]ue to the high volume of
`documents and contributions submitted, physical ‘paper’ copies were not
`handed out” but that, instead, “the documents and contributions were made
`electronically available for download to attendees . . . by way of the IEEE
`802.16 website.” Id. ¶ 7. “The documents and contributions were not
`subject to any confidentiality and could be freely disseminated by attendees
`to other interested persons of skill that had not attended the meetings.” Id.
`Mr. Schwarz described how, “during and after the IEEE 802.16
`Working Group meetings, the submitted documents were publicly accessible
`on the IEEE 802.16 website” and that “[a]ny members that were not in
`
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`IPR2022-00974
`Patent 8,953,641 B2
`attendance at that session, or any other interested members of the general
`public, could also freely access and download submitted documents and
`contributions without restrictions on dissemination, in real time, similar to
`the access afforded the actual attendees of the work sessions.” Ex. 1010 ¶ 8.
`He further explained that “[b]ased on [his] experience with IEEE and
`the telecommunications industry, [he] would expect any person
`implementing a cellular network or device, e.g., a UMTS network, to consult
`the corresponding Session Reports on the IEEE reports page, as well as other
`related documents,” as “[t]he whole purpose of IEEE’s online database
`hosting and making these reports available was so that engineers and other
`individuals would have ready access to them when developing and
`implementing cellular networks and devices.” Ex. 1010 ¶ 10.
`Mr. Schwartz then described the Session #30 meeting, which he
`attended, and identified and attached documentation supporting his
`description of how Hwang was made publicly available before and during
`the Session #30 meeting. See Ex. 1010 ¶¶ 12–21.
`We find Mr. Schwartz’s detailed testimony about the public
`availability of Hwang sufficient to authenticate Ex. 1004, as it is essentially
`uncontested, is corroborated by documentation, and also is corroborated by
`the fact that a copy of a document that appears identical to Ex. 1004 is still
`available on the IEEE website.8 There is simply no reason to think that
`Hwang is not what it appears to be.
`Patent Owner argues “Petitioner must show that Ex. 1004 is a true and
`correct copy of the submission allegedly made by Hwang on March 11,
`
`
`8 See https://www.ieee802.org/16/tgd/contrib/C80216d-04_19.pdf.
`
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`IPR2022-00974
`Patent
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