UNITED STATES PATENT AND TRADEMARK OFFICE
`
`———————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`———————
`
`TESLA INC.,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`———————
`
`U.S. Patent No. 10,136,416
`_____________________
`
`DECLARATION OF DR. ZHI DING,
`UNDER 37 C.F.R. § 1.68 IN SUPPORT OF PETITION FOR
`INTER PARTES REVIEW
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`Inter Partes Review of U.S. 10,136,416
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`TABLE OF CONTENTS
`Introduction ...................................................................................................... 4(cid:3)
`I.(cid:3)
`Qualifications and Professional Experience .................................................... 5(cid:3)
`II.(cid:3)
`III.(cid:3) Level of Ordinary Skill in the Art ................................................................. 11(cid:3)
`IV.(cid:3) Relevant Legal Standards .............................................................................. 12(cid:3)
`V.(cid:3)
`Background .................................................................................................... 13(cid:3)
`A.(cid:3)
`Cellular Communication ..................................................................... 13(cid:3)
`B.(cid:3)
`Paging .................................................................................................. 15(cid:3)
`VI.(cid:3) Overview of the ’416 Patent .......................................................................... 17(cid:3)
`A.(cid:3)
`Summary of the ’416 Patent ................................................................ 17(cid:3)
`B.(cid:3)
`Prosecution History ............................................................................. 21(cid:3)
`VII.(cid:3) Claim Construction ........................................................................................ 21(cid:3)
`VIII.(cid:3) Identification of how the Claims are Unpatentable ....................................... 22(cid:3)
`A.(cid:3) Ground 1: Claims 1-12 are obvious under 35 U.S.C. § 103 over
`Kim and Vayanos. ............................................................................... 22(cid:3)
`1.(cid:3)
`Summary of Kim ........................................................... 22(cid:3)
`2.(cid:3)
`Summary of Vayanos .................................................... 28(cid:3)
`3.(cid:3)
`Reasons to Combine Kim and Vayanos ........................ 31(cid:3)
`4.(cid:3)
`Claim 1 ........................................................................... 35(cid:3)
`5.(cid:3)
`Claim 2 ........................................................................... 62(cid:3)
`6.(cid:3)
`Claim 3 ........................................................................... 65(cid:3)
`7.(cid:3)
`Claim 4 ........................................................................... 65(cid:3)
`8.(cid:3)
`Claim 5 ........................................................................... 66(cid:3)
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`B.(cid:3)
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`Claim 6 ........................................................................... 69(cid:3)
`9.(cid:3)
`Claims 7-12 .................................................................... 71(cid:3)
`10.(cid:3)
`Claim 7 ........................................................................... 71(cid:3)
`11.(cid:3)
`Claim 8 ........................................................................... 72(cid:3)
`12.(cid:3)
`Claim 9 ........................................................................... 73(cid:3)
`13.(cid:3)
`Claim 10 ......................................................................... 73(cid:3)
`14.(cid:3)
`Claim 11 ......................................................................... 73(cid:3)
`15.(cid:3)
`Claim 12 ......................................................................... 73(cid:3)
`16.(cid:3)
`Ground 2: Claims 1-12 are obvious under 35 U.S.C. § 103 over
`Kim, Vayanos, and AAPA. ................................................................. 73(cid:3)
`1.(cid:3)
`Applicant Admitted Prior Art (AAPA) ......................... 74(cid:3)
`2.(cid:3)
`Reasons to Combine the AAPA with Kim and Vayanos
` 74(cid:3)
`Claim Analysis ............................................................... 78(cid:3)
`3.(cid:3)
`Claim 1 ........................................................................... 79(cid:3)
`4.(cid:3)
`Claims 2-4 ...................................................................... 81(cid:3)
`5.(cid:3)
`Claim 5 ........................................................................... 81(cid:3)
`6.(cid:3)
`Claim 6 ........................................................................... 82(cid:3)
`7.(cid:3)
`Claim 7 ........................................................................... 82(cid:3)
`8.(cid:3)
`Claims 8-10 .................................................................... 84(cid:3)
`9.(cid:3)
`Claim 11 ......................................................................... 84(cid:3)
`10.(cid:3)
`Claim 12 ......................................................................... 84(cid:3)
`11.(cid:3)
`IX.(cid:3) Conclusion ..................................................................................................... 85(cid:3)
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`Ding Declaration
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`I, Dr. Zhi Ding, do hereby declare as follows:
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`I.
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`INTRODUCTION
`1.
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`I am making this declaration at the request of Tesla Inc. in the matter
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`of the Inter Partes Review of U.S. Patent No. 10,136,416 (“the ’416 patent”) to
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`
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`Beale et al.
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`2.
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`I am also being reimbursed for reasonable and customary expenses
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`associated with my work and testimony in this investigation. My compensation is
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`not contingent on the outcome of this matter or the specifics of my testimony, and I
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`have no other interest in this case or the parties thereto.
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`3.
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`I have been asked to provide my opinions regarding whether claims 1-
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`12 (“the Challenged Claims”) of the ’416 patent are unpatentable as they would
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`have been obvious to a person having ordinary skill in the art (“POSITA”) at the
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`time of the alleged invention, in light of the prior art. It is my opinion that all of the
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`limitations of the challenged claims would have been obvious to a POSITA.
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`4.
`
`a.
`
`b.
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`Ex.1002;
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`c.
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`d.
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`
`
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`In the preparation of this declaration, I have studied:
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`the ’416 patent, Ex.1001;
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`the prosecution history of the ’416 patent (“’416 File History”),
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`U.S. Patent No. 8,761,814 to Kim et al. (“Kim”), Ex.1005;
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`U.S. Patent No. 8,144,735 to Vayanos et al. (“Vayanos”), Ex.1006;
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`Inter Partes Review of U.S. 10,136,416
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`5.
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`In forming the opinions expressed below, I have considered:
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`the documents listed above;
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`U.S. Patent No. 7,606,226 to Yi et al. (“Yi”), Ex.1007;
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`the relevant legal standards, including the standard for obviousness,
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`and any additional authoritative documents as cited in the body of this
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`declaration; and
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`my own knowledge and experience based upon my work in the field
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`of networking as described below, as well as the following materials.
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`6.
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`Unless otherwise noted, all emphasis in any quoted material has been
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`added.
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`II. QUALIFICATIONS AND PROFESSIONAL EXPERIENCE
`7. My complete qualifications and professional experience are described
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`in my Curriculum Vitae, a copy of which can be found in Exhibit 1004. The
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`following is a brief summary of my relevant qualifications and professional
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`experience.
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`8.
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`I presently hold the title of Distinguished Professor in the Department
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`of Electrical and Computer Engineering at the University of California, Davis.
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`Before my appointment on July 1, 2020, I held the position of professor for the
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`prior 24 years and have served as a faculty member at several United States
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`universities for over 34 years. I am also a private technical consultant on various
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`technologies related to information systems. In total, I have more than three
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`decades of research experience on a wide range of topics related to data
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`communications and signal processing.
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`9.
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`I earned my Bachelor of Science degree in 1982 in wireless
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`engineering from the Nanjing Institute of Technology (later renamed as Southeast
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`University) in Nanjing, China. I earned my Master of Science degree in 1987 in
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`electrical engineering from the University of Toronto in Toronto, Canada. I earned
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`my Ph.D. in 1990 in electrical engineering from Cornell University in Ithaca, New
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`York.
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`10. My responsibilities as a Professor at University of California, Davis,
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`include classroom instruction on various topics of communication systems and
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`signal analysis, as well as mentoring undergraduate students and supervising
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`graduate students in their research and development efforts on various topics
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`related to digital communications. I have directly supervised such research and
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`development works ranging from signal detection to wireless networking. As the
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`chief academic advisor, I have also directly supervised the completion of over 20
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`Masters' theses and over 30 Ph.D. dissertations on various topics related to digital
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`communications. I have served full time as a faculty member at three major
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`research universities in the United States over the past 30 years, including Auburn
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`University from 1990 to 1998, University of Iowa from 1999 to 2000, and
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`University of California, Davis, from 2000 to present.
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`11. Since 1990, I have been selected as the principal investigator of
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`multiple highly competitive federal and local research grants, including more than
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`twenty major research projects supported by the National Science Foundation and
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`two research projects funded by the U.S. Army Research Office. These
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`competitive research projects focused on developing more efficient and effective
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`digital communication transceivers, networks, and signal processing tools. I have
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`also participated in several large-scale projects supported by the Defense
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`Advanced Research Projects Agency (DARPA) with teams of researchers. I have
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`applied for, and received support from, other federal, state, and industry sponsors.
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`12.
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`I have published over 250 peer-reviewed research articles in premier
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`international journals, in addition to over 250 refereed technical articles at top
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`international conferences on communications and information technologies.
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`According to Google Scholar, my published works have been cited by over 20,000
`
`times by peers. I also authored two books on communications technologies. My
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`most recent book, coauthored with B.P. Lathi, is entitled, “Modern Digital and
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`Analog Communication Systems,” 5th edition, and was published by the Oxford
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`University Press in 2018. The 4th edition of this book (published in 2009) had been
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`widely adopted as an introductory textbook to communication systems.
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`13.
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`In addition to the over 500 published technical papers that have been
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`cited over 20,000 times according to Google Scholar, I am also co-inventor of 4
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`issued U.S. patents on communication technologies.
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`14.
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`I am a member of the Institute of Electrical and Electronics Engineers
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`(IEEE) and was elevated to the grade of Fellow in January 2003 for contributions
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`made in signal processing for communication. The IEEE is the world's largest
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`professional society of engineers, with over 400,000 members in more than 160
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`countries. The IEEE has led the development of many standards for modern digital
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`communications and networking, most notably, the IEEE 802 series of network
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`standards. The IEEE Grade of Fellow is conferred by the Boards of Directors upon
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`a person with an extraordinary record of accomplishments in any of the IEEE
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`fields of interest. The total number selected in any one year does not exceed one-
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`tenth of one percent of the total voting Institute membership.
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`15.
`
`(cid:120)
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`I have served the IEEE in the following capacities:
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`Chief Information Officer of the IEEE Communications Society from
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`Jan. 2018 to present.
`
`(cid:120)
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`Chief Marketing Officer of the IEEE Communications Society from
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`Jan. 2020 to present.
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`(cid:120)
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`General Chair of the 2016 IEEE International Conference on
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`Acoustics, Speech, and Signal Processing, the flagship conference of the IEEE
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`Signal Processing Society.
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`(cid:120)
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`Chair of the Steering Committee for the IEEE Transactions on
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`Wireless Communications from 2008 to 2010.
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`(cid:120)
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`Distinguished Lecturer of the IEEE Communications Society from
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`January 2008 to December 2009.
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`(cid:120)
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`Technical Program Chair of the 2006 IEEE Globecom, one of two
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`flagship annual IEEE Communication Society conferences.
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`(cid:120)
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`Distinguished Lecturer of the IEEE Circuits and Systems Society
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`from 2004 to 2005.
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`(cid:120)
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`Associate Editor of the IEEE Transactions on Signal Processing from
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`1994 to 1997 and from 2001 to 2004.
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`(cid:120)
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`Member of the IEEE Statistical Signal and Array Processing for
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`Communications Technical Committee from 1993 to 1998.
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`(cid:120)
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`Member of the IEEE Signal Processing for Communications
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`Technical Committee from 1998 to 2004.
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`16.
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`In 2012, I received the Wireless Communications Technical
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`Committee Recognition Award from the IEEE Communications Society, an award
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`given to a person with a high degree of visibility and contribution in the field of
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`"Wireless and Mobile Communications Theory, Systems, and Networks." I
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`received the 2020 Education Award from the IEEE Communications Society.
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`According to the Society, this award "recognizes distinguished and significant
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`contributions to education within the Society's technical scope."
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`17.
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`I have also served as a technical consultant for the telecommunication
`
`industry. For example, in 1995 I consulted for Analog Devices, Inc., on the
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`development of the first generation DOCSIS cable modem systems. I have also
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`consulted for other companies, including Nortel Networks and NEC US
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`Laboratories. I worked as a visiting faculty research fellow at NASA Glenn
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`Research Center in 1992 and at U.S. Air Force Wright Laboratory in 1993. I have
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`served on multiple review panels of the National Science Foundation to evaluate
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`competitive research proposals in the field of communication. I have also reviewed
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`a large number of research proposals at the request of the National Science and
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`Engineering Research Council (NSERC) of Canada as an expert panelist from
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`2010 to 2013, and also at the request of the Research Grant Council (RGC) of
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`Hong Kong as an external reviewer.
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`18.
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`I have served as an expert witness or consulting expert on a number of
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`matters related to intellectual property, mostly in the arena of telecommunications,
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`including cellular communications, Wi-Fi technologies, Bluetooth, and optical
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`communications. For example, since 2007, I have been engaged to work on various
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`litigations involving cellular, WiFi, Bluetooth, and optical communication
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`networks. Many of my expert works related to the standard essentiality of patents
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`with respect to the 3GPP 2G/3G/4G/5G technical specifications, the IEEE 802.11
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`standards, and the Bluetooth standards. I have provided testimonies at court trials
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`or hearings in multiple jurisdictions, both in the United States and internationally. I
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`have submitted declarations to PTAB as expert on a number of inter partes reviews
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`of challenged patents.
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`III. LEVEL OF ORDINARY SKILL IN THE ART
`19.
`
`I understand there are multiple factors relevant to determining the
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`level of ordinary skill in the pertinent art, including (1) the levels of education and
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`experience of persons working in the field at the time of the invention; (2) the
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`sophistication of the technology; (3) the types of problems encountered in the field;
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`and (4) the prior art solutions to those problems.
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`20.
`
` It is my understanding that the earliest possible priority date for the
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`’416 patent is September 27, 2007. A person of ordinary skill in the art
`
`(“POSITA”) in the field of the ’416 patent, as of September 27, 2007, would have
`
`been someone knowledgeable and familiar the wireless communication arts that
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`are pertinent to the ’416 patent. That person would have a bachelor’s degree from
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`an accredited program in electrical engineering, computer engineering, computer
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`science, or equivalent training, and approximately two years of experience working
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`in the relevant field. Lack of work experience can be remedied by additional
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`education, and vice versa.
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`21. For purposes of this Declaration, in general, and unless otherwise
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`noted, my statements and opinions, such as those regarding my experience and the
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`understanding of a POSITA generally (and specifically related to the references I
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`consulted herein), reflect the knowledge that existed in the field as of the alleged
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`priority date of the ’416 patent (i.e., September 27, 2007). Unless otherwise stated,
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`when I provide my understanding and analysis below, it is consistent with the level
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`of a POSITA as of the alleged priority date of the ’416 patent.
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`IV. RELEVANT LEGAL STANDARDS
`22.
`
`I am not an attorney. In preparing and expressing my opinions and
`
`considering the subject matter of the ’416 patent, I am relying on certain basic
`
`legal principles that counsel have explained to me. These principles are discussed
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`below.
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`23.
`
`I understand that prior art to the ’416 patent includes patents and
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`printed publications in the relevant art that predate the priority date of the alleged
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`invention recited in the ’416 patent.
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`24.
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`I have been informed that a claimed invention is unpatentable under
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`35 U.S.C. § 103 if the differences between the invention and the prior art are such
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`that the subject matter as a whole would have been obvious at the time the
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`invention was made to a person having ordinary skill in the art to which the subject
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`matter pertains. I have also been informed by counsel that the obviousness analysis
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`takes into account factual inquiries including the level of ordinary skill in the art,
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`the scope and content of the prior art, and the differences between the prior art and
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`the claimed subject matter.
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`25.
`
`I have been informed by counsel that the Supreme Court has
`
`recognized several rationales for combining references or modifying a reference to
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`show obviousness of claimed subject matter. Some of these rationales include the
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`following: (a) combining prior art elements according to known methods to yield
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`predictable results; (b) simple substitution of one known element for another to
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`obtain predictable results; (c) use of a known technique to improve a similar device
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`(method, or product) in the same way; (d) applying a known technique to a known
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`device (method, or product) ready for improvement to yield predictable results; (e)
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`choosing from a finite number of identified, predictable solutions, with a
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`reasonable expectation of success; and (f) some teaching, suggestion, or motivation
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`in the prior art that would have led one of ordinary skill to modify the prior art
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`reference or to combine prior art reference teachings to arrive at the claimed
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`invention.
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`V. BACKGROUND
`A. Cellular Communication
`26. The background section of the ’416 patent describes conventional
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`cellular communication systems. “Known cellular communication systems such as
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`a Universal Mobile Telecommunications System (UMTS) Radio Access Network
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`(UTRAN), standardised by the 3rd Generation Partnership Project (3GPP),
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`typically consist of a set of radio network controllers (RNCs), Node B, also known
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`as Node-Bs, and mobile stations (MSs), also known as User Equipment (UEs).”
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`’416 Patent, 1:25-30. In the example cellular communication system 100 shown
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`below, “Node Bs 110 are connected to an RNC 105 via an interface (Iub) 115.”
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`’416 patent, 1:47-48. “The Node Bs are connected wirelessly to the UEs 120.”
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`’416 patent, 1:52-53.
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`’416 patent, Fig. 1.
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`27. The Node Bs (base-stations) communicate with the terminals by
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`transmitting signals that are formatted into frames. An example frame is shown in
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`Fig. 3 below.
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`’416 patent, Fig. 3.
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`28. The conventional frame above includes a Broadcast Channel BCH, a
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`signal channel (e.g., Forward Access Channel FACH), and shared channels (e.g.,
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`High Speed Downlink Shared Channels HS-DSCH). See ’416 patent, 3:47-57
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`B.
`Paging
`29. When a UE is not involved in active connections, the UE enters an
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`idle state, whereby the UE powers down its radio frequency circuitry (RF) to
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`conserve battery power. ’416 patent, 1:54-57. The UE will “periodically power up
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`its radio circuitry in order to monitor specific channels in order to determine
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`whether it is required to establish a connection with the network,” for example, for
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`an in-coming call. ’416 patent, 1:58-64; see also Ex.1015, 134 (describing the
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`known paging procedure).
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`30. When the idle UE powers on its radio circuitry, it monitors
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`information on what is called the Paging Indication Channel PICH. “The PICH
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`comprises multiple indicator bits. Each UE is associated with one of the indicator
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`bits within the PICH.” ’416 patent, 2:12-14. “When in the idle state, the UE
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`periodically decodes the PICH to see if the indicator bit with which it is associated
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`has been set.” ’416 patent, 2:16-18. “If the relevant indicator has been set, the UE
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`then reads the [Paging Channel] PCH.” ’416 patent, 2:19-20. “The PCH is a
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`downlink transport channel that is used to carry control information to a UE.” ’416
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`patent, 2:7-8.
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`31. To decode the information in the Paging Channel PCH, the UE uses
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`an identifier. “Each UE has a unique identifier (UE-ID).” ’416 patent, 2:21-25.
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`When the network pages a UE, as previously mentioned, the network ... transmits
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`the UE-ID for the UE being paged, and the relevant message within the PCH.”
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`’416 patent, 2:21-25. The base station transmits the identifier in the Paging
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`Channel PCH because “more than one UE may be associated with an indicator bit
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`in the PICH.” ’416 patent, 2:25-27. “[T]he UE-ID enables a UE to determine
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`whether the message is intended for that UE or not. If the PCH contains the UE-ID
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`for the UE, the UE then reads the message, and performs the required actions.”
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`’416 patent, 2:27-30. Accordingly, “in the known art, the indicator bits are used in
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`a paging channel to inform the UE whether it needs to turn its radio on for reading
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`the PCH (i.e. as a battery saving mode).” ’416 patent, 2:30-31.
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`VI. OVERVIEW OF THE ’416 PATENT
`A.
`Summary of the ’416 Patent
`32. The ’416 patent relates to “allocating channel resources within a
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`physical channel of a cellular communication system.” ’416 patent, 1:20-21. In
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`particular, the ’416 patent purports to solve the known problem of wasting
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`resources on unused signaling channels: “As will be appreciated by a skilled
`
`artisan, the fact that the FACH timeslot 310 is required to be reserved, particularly
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`during light use of the FACH, is an inefficient use of physical resources.” ’416
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`patent, 3:58-61. The ’416 patent also states that while “embodiments of the
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`invention will be described in a context of a Forward Access Channel (FACH)
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`... the inventive concept described herein may be applied to any direct
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`signalling channel, such as a paging channel.” ’416 patent, 9:38-41.
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`33. But the ’416 patent seeks to address this waste of resources by using
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`techniques that were already known and used. The purported novelty of the ’416
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`patent is to use indicator bits in the broadcast channel (BCH) to indicate
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`whether a particular timeslot within a frame should be used for signaling or as a
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`shared channel. See ’416 patent, 9:38-58. “[T]he indicator bits are used to
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`inform the UE whether it should be reading the resources ‘reserved’ for FACH
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`as a FACH channel, or whether it should be ignoring those resources (for
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`example when they are being used for another channel such as HS-DSCH).”
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`’416 patent, 9:53-58.
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`34. The specification of the ’416 patent describes how a signaling channel
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`such as a FACH is conventionally allocated within a frame. As can be seen below
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`in Fig. 3 (admitted prior art), a frame includes a Broadcast Channel (BCH), a
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`Forward Access Channel 310 (FACH), and several High-Speed Downlink Shared
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`Channel (HS-DSCH 305 timeslots.
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`Shared Channels
`Signal Channel
`Broadcast Channel
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`’416 Patent, Fig. 3
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`’416 patent, Fig. 3 (annotated).
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`35. The ’416 patent illustrates its purported novelty of using indicator
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`bits within the broadcast channel, shown in Fig. 5 below.
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`Indicator bits
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`Shared Channels
`Signal Channel
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`Broadcast Channel
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`’416 patent, Fig. 5 (annotated).
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`36. The ’416 patent explains that an indicator bit (e.g., indicator bit 522)
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`“is used is used to indicate whether a FACH channel to which it relates is ‘active.’”
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`’416 patent, 12:3-4. Thus, “[w]hen the NODE B 410 is required to send a FACH
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`message, ... the NODE B 410 sets the FACH indicator bit 522.” ’416 patent, 12:7-
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`10. If, however, “no FACH message is required to be transmitted ... the FACH
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`indicator bit 522 ... is not set.” Ex.1001, 12:25-28. This allows the system to
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`“reallocate the FACH timeslot 520 for use by a channel other than the FACH,
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`when no FACH message is required to be transmitted.” ’416 patent, 12:40-42. For
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`example, “the FACH timeslot 520 is reallocated for use by the HS-DSCH 505. The
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`HS-DSCH 505 is a shared channel.” ’416 patent, 12:43-45. The reallocated time
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`slot is shown below in Fig. 6.
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`Shared Channels
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`Broadcast Channel
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`’416 patent, Fig. 6 (annotated).
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`37. When the indicator bit in the Broadcast Channel BCH does indicate
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`the presence of the FACH channel, as shown in Fig. 5, the UEs follow the normal
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`procedure for reading and decoding the FACH. See ’416 patent, 12:17-23. “If there
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`is a FACH message, the UE 430 is able to read the contents of the FACH channel,
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`and determine whether, or not, the message is intended for itself.” ’416 patent,
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`10:47-49. “Upon reading a set FACH indicator bit, the UE 430 determines that the
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`NODE B 430 is transmitting a FACH message, and ... is able to decode the FACH
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`message.” ’416 patent, 12:17-21. “If the identity of the UE 430 matches the
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`identity transmitted within the FACH message, the UE 430 acts on the message
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`content.” ’416 patent, 12:21-23
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`38. However, for the reasons I explain below, it was already known to use
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`indicator bits in the broadcast channel to indicate whether a particular time slot is
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`to be used as a signaling channel (e.g., FACH or PCH) or as a shared high speed
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`data channel (e.g., HS-DSCH).
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`B.
`Prosecution History
`39. The ’416 patent was filed on June 1, 2020. See Ex.1002. It ultimately
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`claims priority through a series of continuations to an application filed September
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`27, 2007. See Ex.1002, 118. The originally filed with claims were nearly identical
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`to those of the parent application (U.S. Patent No. 9,674,818, Ex.1009). See
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`Ex.1002, 154-56.
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`40.
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`In the first office action, the Examiner made only a double patenting
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`rejection and indicated that the claims were otherwise allowable. Ex.1002, 65-67.
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`In response, the Applicant cancelled all pending claims and added 12 new claims
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`on March 30, 2018. Ex.1002, 55-61. The Examiner allowed the new claims
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`without comment. Ex.1002, 19-23.
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`VII. CLAIM CONSTRUCTION
`41.
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`It is my understanding that in order to properly evaluate the ’416
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`patent, the terms of the claims must first be interpreted. It is my understanding that
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`for the purposes of this inter partes review, the claims are to be construed under
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`the so-called Phillips standard, under which claim terms are given their ordinary
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`and customary meaning as would be understood by one of ordinary skill in the art
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`in light of the specification and prosecution history, unless the inventor has set
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`forth a special meaning for a term. For the purposes of my analysis below, I do not
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`believe any claim terms require explicit construction.
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`VIII. IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE
`42.
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`I have been asked to provide my opinion as to whether the Challenged
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`Claims of the ’416 patent would have been obvious in view of the prior art. The
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`discussion below provides a detailed analysis of how the prior art references
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`identified below teach the limitations of the Challenged Claims of the ’416 patent.
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`43. As part of my analysis, I have considered the scope and content of the
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`prior art and any differences between the alleged invention and the prior art. I
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`describe in detail below the scope and content of the prior art, as well as any
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`differences between the alleged invention and the prior art, on an element-by-
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`element basis for each Challenged Claims of the ’416 patent.
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`44. As described in detail below, the alleged invention of the Challenged
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`Claims would have been obvious in view of the teachings of the identified prior art
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`references as well as the knowledge of a POSITA. My obviousness analysis relies
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`on the combined teachings of the references and not on a physical incorporation of
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`elements
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`A. Ground 1: Claims 1-12 are obvious under 35 U.S.C. § 103 over
`Kim and Vayanos.
`1.
`Summary of Kim
`45. Like the ’416 patent, Kim “relates to a method for transmitting paging
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`information in a cellular system.” Kim, 1:6-8. Kim identifies the same problem
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`described in the ’416 patent—wasted radio resources. The ’416 patent explains that
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`“timeslots reserved for FACH transmissions could be utilised for a traffic channel
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`during periods when no FACH transmissions were required to be sent.” ’416
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`patent, 3:67-4:3. Kim similarly explains that when there is no information to be
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`sent in a control channel (e.g., a paging channel PCH), “radio resource[s], i.e.,
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`power, are allocated and thus radio resources are wasted.” Kim, 1:34-37. Kim
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`solves this problem with the same solution concept described and claimed in the
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`’416 patent. Kim describes using indicator bits in the Broadcast Channel BCH to
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`indicate whether a particular time slot will be used as a signaling channel (e.g., a
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`Paging Channel PCH) or as a downlink shared channel. See Kim, 4:36-5:21.
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`46. Like in the ’416 patent, Kim’s base station sends out radio frames.
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`Fig. 2 of Kim illustrates a series of frames (Frame#0-Frame#M). The bottom
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`portion of Fig. 2 illustrates a single frame (Frame#0) (purple) in more detail, with
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`paging indicator channel PICH 6 embedded within in the broadcast channel (BCH)
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`(blue).
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`Broadcast Channel BCH
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`Paging Indicator Channel PICH
`Kim, Fig. 2 (annotated).
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`47. Kim describes its Paging Indication Channel (PICH) consistent with
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`known paging procedures. “[T]he base station sets up a paging indication channel
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`6 corresponding to the terminal or the terminal group indicated by the paging
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`information and forms the paging indication channel 6.” Kim, 4:58-61. The base
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`station schedules the PICH within the broadcast channel: “The scheduler performs
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`scheduling on broadcasting channel (BCH) information, created paging channel
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`information ... to be transmitted