Huawei Device USA, Inc. and ZTE (USA), INCv.SPH America, LLC., and ELECTRONICS AND TELECOMMUNICATIONS RESEARCH INSTITUTE

Patent Trial and Appeal Board

May 28, 2015

13292715 (P.T.A.B. May. 28, 2015)

Trials@uspto.gov Paper 13
571-272-7822 Entered: May 28, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

HUAWEI DEVICE USA, INC. and ZTE (USA), INC.,
Petitioner,

v.

SPH AMERICA, LLC and ELECTRONICS AND
TELECOMMUNICATIONS
RESEARCH INSTITUTE,
Patent Owner.
____________

Case IPR2015-00203
Patent 8,532,231 B2
____________

Before SALLY C. MEDLEY, BARBARA A. BENOIT, and
BETH Z. SHAW, Administrative Patent Judges.

MEDLEY, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

IPR2015-00203
Patent 8,532,231 B2

2
I. INTRODUCTION
Huawei Device USA, Inc. and ZTE (USA), Inc. (collectively,
“Petitioner”), filed a Petition requesting an inter partes review of claims 16,
20, 35, 40, 47–51, and 54–57 of U.S. Patent No. 8,532,231 B2 (Ex. 1001,
“the ’231 patent”). Paper 4 (“Pet.”). In response, Electronics and
Telecommunications Research Institute and SPH America, LLC
(collectively, “Patent Owner”), filed a Preliminary Response. Paper 10
(“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314, which
provides that an inter partes review may not be instituted “unless . . . the
information presented in the petition . . . 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.”
For the reasons set forth below, we deny institution of an inter partes
review of the ’231 patent.
A. Related Matter
The ’231 patent is involved in at least the following lawsuits: SPH v.
Huawei Technologies, Co., LTD et al., No. 3:13-cv-02323-CAB (S.D. Cal.);
and SPH v. ZTE (USA), Inc., No. 3:13-cv-02326-CAB (S.D. Cal.). Pet. 1–2.
B. The ’231 Patent
The ’231 patent relates generally to an apparatus compatible with a
conventional wireless local area network communication system, for
transmitting and receiving data in high-speed. Ex. 1001, 1:24–29.
Specifically, the described apparatus is used for transmitting and receiving
IPR2015-00203
Patent 8,532,231 B2

3
data using multiple antennas while being compatible with conventional
IEEE 802.11a orthogonal frequency division multiplexing (OFDM). Id. at
1:35–47.
C. Illustrative Claim
Of the challenged claims, claims 16, 35, 47, and 54 are the only
independent claims. Claim 20 depends directly from claim 16; claim 40
depends directly from claim 35; claims 48–51 depend either directly or
indirectly from claim 47; and claims 55–57 depend either directly or
indirectly from claim 54.
Claim 16, reproduced below, is illustrative.
16. A receiving apparatus in a wireless communication system,
the apparatus comprising:
a receiving unit configured to receive a frame comprising
sequentially a short preamble, a first long preamble, a signal
symbol, a second long preamble, and a data symbol, wherein
the short preamble comprises a symbol for synchronization; and
a determination unit configured to determine, based on
information in the signal symbol, whether the frame is
transmitted using space time block coding.
Ex. 1001, 15:61–16:3.

IPR2015-00203
Patent 8,532,231 B2

4
D. Asserted Grounds of Unpatentability
Petitioner asserts the following grounds of unpatentability:
Challenged Claims Basis References
16 and 47 § 103(a) Narasimhan
1
and Alamouti
2

35, 48–50, 54, 55, and
56
§ 103(a)
Narasimhan, Alamouti, and IEEE
802.11a Standard
3

20, 40, 51, and 57 § 103(a)
Narasimhan, Alamouti, IEEE
802.11a Standard, and Aoki
4

20, 40, 51, and 57 § 103(a)
Narasimhan, Alamouti, IEEE
802.11a Standard, and Gummadi
5

1
U.S. Patent No. 7,577,085 B1, issued Aug. 18, 2009, filed July 5, 2002
(Ex. 1009) (“Narasimhan”). The parties refer to this reference as “N’085.”
2
S. M. ALAMOUTI, “A Simple Transmit Diversity Technique for Wireless
Communications,” IEEE J. ON SELECT AREAS IN COMMUNICATIONS, Vol. 16,
No. 8, October 1998 (Ex. 1003) (“Alamouti”).
3
IEEE Standard 802.11a (1999) (Ex. 1010).
4
Aoki, et al., “New preamble structure for AGC in a MIMO-OFDM-
system,” IEEE 802.11-04/046r1, Jan. 2004 (Ex. 1008) (“Aoki”). Petitioner
asserts this reference is “a presentation given by employees of [a particular
corporation] . . . to the IEEE in January 2004.” Pet. 8.
5
U.S. Patent Application Publication No. 2005/0054313 A1,
published Mar. 10, 2005, filed Mar. 29, 2004 (Ex. 1011) (“Gummadi”).
IPR2015-00203
Patent 8,532,231 B2

5
Challenged Claims Basis References
16 and 47 § 103(a) Liu
6
and Jeon
7

35, 48–50, 54, 55, and
56
§ 103(a)
Liu, Jeon, and IEEE 802.11a
Standard
20, 40, 51, and 57 § 103(a)
Liu, Jeon, IEEE 802.11a Standard,
and Aoki

II. ANALYSIS
A. Real Party-In-Interest
Section 312(a) of Title 35 of the United States Code provides that a
petition for inter partes review under 35 U.S.C. § 311 may be considered
only if, among other things, the petition identifies all real parties-in-interest.
35 U.S.C. § 312(a)(2). Whether a non-identified party is a real party-in-
interest to a proceeding is a highly fact-dependent question. Office Patent
Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012) (“Trial
Practice Guide”) (citing Taylor v. Sturgell, 553 U.S. 880 (2008)). “Courts
invoke the terms ‘real party-in-interest’ and ‘privy’ to describe relationships
and considerations sufficient to justify applying conventional principles of

6
Liu & Li, “A MIMO System with Backwards Compatibility for OFDM
based WLANs,” 4th IEEE Workshop on Signal Processing Advances in
Wireless Communications, 2003 (Ex. 1012) (“Liu”).
7
Jeon, et al., “Optimal Combining of STBC and Spatial Multiplexing for
MIMO-OFDM,” IEEE 802.11-03/0513r0, July 2003 (Ex. 1006) (“Jeon”).
Petitioner asserts these slides were “submitted to IEEE on July 2003.”
Pet. 7.
IPR2015-00203
Patent 8,532,231 B2

6
estoppel and preclusion.” Id. Taylor lists six categories that create an
exception to the common law rule that normally forbids non-party
preclusion in litigation. Taylor, 553 U.S. at 893–95. “A common
consideration is whether the non-party exercised or could have exercised
control over a party’s participation in a proceeding.” Trial Practice Guide,
77 Fed. Reg. at 48,759 (citing Taylor, 553 U.S. at 895).
Factors for determining actual control or the opportunity to control
include existence of a financially controlling interest in the petitioner. Rules
of Practice for Trials Before the Patent Trial and Appeal Board and Judicial
Review of Patent Trial and Appeal Board Decisions; Final Rule, 77 Fed.
Reg. 48,612, 48,617 (Aug. 14, 2012). Additional relevant factors include:
the non-party’s relationship with the petitioner; the non-party’s relationship
to the petition itself, including the nature and/or degree of involvement in the
filing; and the nature of the entity filing the petition. Trial Practice Guide,
77 Fed. Reg. at 48,760.
The Petition names ZTE (USA), Inc. (“ZTE (USA)”) as a real party-
in-interest. Pet. 1. Patent Owner argues that ZTE (USA)’s parent company,
ZTE Corporation, also is a real party-in-interest. Prelim. Resp. 30–32. In
particular, Patent Owner argues that assertions made jointly by ZTE
Corporation and ZTE (USA) during a related district court case are sufficient
to show that ZTE Corporation is a real party-in-interest for purposes of this
proceeding. Id.
We have considered the reasoning and evidence to which we are
directed in support of Patent Owner’s arguments—a joint motion for
IPR2015-00203
Patent 8,532,231 B2

7
dismissal of ZTE Corporation from the related case. Ex. 2005 (“joint
motion” or “evidence”). We disagree with Patent Owner that the joint
motion tends to show that ZTE Corporation has an interest in this
proceeding. We find the joint motion to be ambiguous. Patent Owner relies
on the joint motion to show that ZTE Corporation and ZTE (USA) made
mutual representations regarding party responsibility for infringement, and
that ZTE Corporation and ZTE (USA) shared information and documents
during the related case. Prelim. Resp. 31–32. The joint motion, however,
also represents ZTE Corporation’s dismissal from the case, seemingly
representing that ZTE Corporation and ZTE (USA) have nonaligned
interests with respect to the related case. The joint motion is not persuasive
evidence to show that ZTE Corporation exercised or could have exercised
control over the IPR petition drafting and filing as Patent Owner asserts.
The Petition also names Huawei Device USA, Inc. (“Huawei USA”)
as a Petitioner real party-in-interest. Pet. 1. Patent Owner argues that
Huawei Technologies Co., Ltd. (“Huawei Tech.”), Futurewei Technologies,
Inc. (“Futurewei Tech.”), and Shenzhen Huawei Investment and Holding
Co., Ltd. (“Shenzhen”) also are real parties-in-interest. Prelim. Resp. 33. In
particular, Patent Owner argues that because Huawei Tech. and Futurewei
Tech. are co-defendants with Huawei USA in a related district court case,
they all have a common interest in the instant challenges brought by
Petitioner. Id. at 32. Patent Owner additionally argues that because Huawei
USA, Huawei Tech., and Futurewei Tech. are each subsidiaries of Shenzhen,
Shenzhen also should be included as a real party-in-interest. Id. at 33.
IPR2015-00203
Patent 8,532,231 B2

8
There is little to no reasoning or evidence of record to suggest that
Shenzhen should be named a real party-in-interest. We have considered
Exhibit 2006, which is the defendants’ answer to the complaint filed in the
related case. Ex. 2006. Patent Owner relies on Exhibit 2006 to show that
Shenzhen, who is not involved in the related case, is the parent company to
all of the other companies mentioned therein. But Exhibit 2006 describes
Huawei USA, Huawei Tech., and Futurewei Tech. as “indirect” subsidiaries.
We do not know, based on the record before us, what relationship constitutes
an “indirect” one, and Patent Owner does not explain the relationship status
in that regard. In any event, even if Huawei USA, Huawei Tech., and
Futurewei Tech. are “direct” subsidiaries of Shenzhen, that alone does not
make Shenzhen a real party-in-interest of this proceeding. Patent Owner has
not shown that Shenzhen controlled, or could have controlled, the
proceeding. Patent Owner’s arguments with respect to Shenzhen being a
real party-in-interest are tenuous.
The same Exhibit 2006 also is relied on by Patent Owner to show that
Huawei Tech. and Futurewei Tech., by status of being co-defendants with
Huawei USA, should be named as real parties-in-interest in this proceeding.
Being a co-defendant in a related case does not, without more, establish
control or the ability to control a proceeding. For all of these reasons, we
determine that Patent Owner has not shown that Petitioner has failed to
name all real parties-in-interest.
IPR2015-00203
Patent 8,532,231 B2

9
B. Claim Construction
In an inter partes review, 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); see also In re Cuozzo
Speed Techs., LLC, 778 F.3d 1271, 1281–82 (Fed. Cir. 2015) (“Congress
implicitly adopted the broadest reasonable interpretation standard in
enacting the AIA,” and “the standard was properly adopted by PTO
regulation.”). Under the broadest reasonable interpretation standard, claim
terms are given 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).
For purposes of this Decision, we only need to construe the term
“space time block coding.”
Independent claims 16, 35, 47, and 54 recite “space-time block
coding.” Petitioner contends, relying on the Declaration of Tim A.
Williams, Ph.D. (Ex. 1002) for support, that space-time block coding (i.e.,
STBC) is a term of art in telecommunications, and then describes a space-
time block coding system. Pet. 12 (citing Ex. 1002 ¶ 91). As Patent Owner
observes, Petitioner does not propose a construction for the term space-time
block coding. Prelim. Resp. 16. Nor does Patent Owner propose a
construction. See id. at 16–19 (rebutting Petitioner’s proposed construction
of space-time block coding). Although not presented in the Petition,
Petitioner’s declarant asserts that “one of skill in the art would understand
IPR2015-00203
Patent 8,532,231 B2

10
the term ‘space-time block coding’ to mean, in the context of the . . . ’231
patent[], using block codes to encode a data stream, copies of which are
transmitted over multiple antennas.” Ex. 1002 ¶ 91.
The ’231 patent does not set forth a special definition for “space-time
block coding.” The ’231 patent describes “space-time block coding” or
STBC in the context of how it is used, which is consistent with
Dr. Williams’s conclusory testimony. For example, concerning the
transmission over multiple antennas, the ’231 patent is directed to using
multiple antennas for transmission to achieve a higher data rate, rather than
using a single antenna for wirelessly transmitting data as used in the
conventional IEEE 802.11a protocol. Ex. 1001, 1:35–41, 45–47.
The ’231 patent also describes space-time block coding as a way to
encode data for transmission. For example, the ’231 patent describes
“encod[ing] STBC, an STBC encoder, and an STBC decoder.” Id. at 4:9,
7:15–18; see also id. at 11:12–15 (determining “whether the transit mode is
the SDM-OFDM or the STBC-OFDM, and restores the transmit data after a
proper demodulation process according to the determined mode”). The ’231
patent contrasts space-time block coding with another method that can be
used in MIMO systems—spatial division multiplexing (“SDM”). Id. at
3:60–63, 10:37–40 (determining whether the transmit mode in a multiple
antenna transmit system (i.e., MIMO) is the SDM mode or the STBC mode);
see id. at 7:4 (defining SDM as an acronym for spatial division
multiplexing). Thus, space-time block coding, in the context of the ’231
IPR2015-00203
Patent 8,532,231 B2

11
patent, is a method that uses block codes to encode a data stream for
transmission over multiple antennas in a MIMO system.
C. Asserted Grounds of Obviousness Relying on Narasimhan and
Alamouti
Petitioner contends the challenged claims all would have been
obvious under § 103 over the combination of Narasimhan and Alamouti,
either over the combination alone, or over the combination and various other
references. Pet. 12–43. To support these contentions, Petitioner provides
explanations and claim charts specifying where claim limitations
purportedly are disclosed or suggested in the references and why one skilled
in the art would have combined the references. Id. Petitioner also cites the
Declaration of Dr. Williams for support. Id. Patent Owner challenges
Petitioner’s contentions regarding Narasimhan and Alamouti. Prelim. Resp.
34–45, 50–56.
We determine that the information presented by Petitioner fails to
establish a reasonable likelihood that any of the challenged claims are
unpatentable under 35 U.S.C. § 103 as obvious over Narasimhan and
Alamouti for the reasons that follow.
1. Narasimhan
Narasimhan describes techniques for addressing the problem that the
IEEE 802.11a standard “do[es] not account for transmit diversity,” and
Narasimhan recognized that “it would be advantageous to incorporate
transmit diversity in a wireless transmission system that is backwards
IPR2015-00203
Patent 8,532,231 B2

12
compatible with the IEEE 802.11a . . . standards.” Ex. 1009, 2:6–12. To do
so, Narasimhan describes a novel frame format that is compliant with the
preamble of the IEEE 802.11a standard.
8
Id. at 4:58–64.
Narasimhan’s frame format includes a signal field which immediately
follows the standards-compliant preamble, and generally is similar to the
signal field of the IEEE 802.11a standard. Id. at 4:66–5:2. In contrast to the
IEEE 802.11a standard, Narasimhan’s signal field, however, also uses the
reserved bit of the IEEE 802.11a standard signal field to indicate whether the
data packet follows the diversity data packet format used when two antennas
are used to transmit. Id. at 5:2–18, 9:27–32; see id. at Fig. 2 (showing
Narasimhan’s data packet format). The reserved bit is referred to as a
“transmission diversity” flag (or semaphore) or as “TXDIV flag.” Id. at
4:5–13, 5:2–6, 9:27–32. Using the reserved bit of the signal field, according
to Narasimhan, allows IEEE 802.11a standard-compliant transceivers to be
used. Id. at 5:6–15; see also id. at 9:4–34 (describing a receiver processing
the received signal in accordance with the IEEE 802.11a standard unless the
transmit diversity flag has been set).
2. Alamouti
Alamouti describes a transmit diversity technique using two transmit
antennas and one receive antenna for wireless communications. Ex. 1003,
Abstract. Two signals are transmitted simultaneously from two antennas

8
To be more precise, the novel packet format is compliant with the Physical
Layer Control Protocol (“PLCP”) preamble of the IEEE 802.11a standard.
Ex. 1009, 3:42–48, 4:62–64.
IPR2015-00203
Patent 8,532,231 B2

13
and “encoding is done in space and time.” Id. at 3. Alamouti also indicates
that “[t]he encoding, however, may also be done in space and frequency.”
Id.
3. The Challenged Claims
Petitioner, relying on testimony from its declarant, contends that
Narasimhan teaches or suggests all of the features recited by independent
claim 16, except for space-time block coding, which is taught by Alamouti.
Pet. 12–16. Petitioner also contends that one of ordinary skill in the art
would have had reason to combine Narasimhan’s techniques for
transmission diversity with the space-time block coding of Alamouti.
Pet. 13–14 (citing Ex. 1002 ¶¶ 139–43). Patent Owner challenges
Petitioner’s contentions. Prelim. Resp. 34–45.
A dispositive issue concerns “determin[ing], based on information in
the signal symbol, whether the frame is transmitted using space time block
coding,” recited in independent claim 16. For this feature, Petitioner relies
on the combination of Narasimhan’s disclosure of a signal field that
indicates “the data packet follows a ‘diversity data packet format’” and
Alamouti’s express disclosure of space-time coding. Pet. 14–16.
First, Petitioner concludes, from Alamouti’s express disclosure of
space-time coding, that “Alamouti . . . describes space-time block coding.”
Pet. 13 (emphasis added), 16. Petitioner cites to the Declaration of
Dr. Williams for this proposition. Pet. 14 (citing Ex. 1002 ¶¶ 139–43).
Dr. Williams asserts, without providing further explanation or support, that
Alamouti “is considered the first description of space-time block coding
IPR2015-00203
Patent 8,532,231 B2

14
(STBC), Alamouti’s technique was later coined ‘space-time block coding’
and Alamouti is considered the ‘father’ of STBC.” Ex. 1002 ¶ 140. “Expert
testimony that does not disclose the underlying facts or data on which the
opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65. We
weigh Dr. Williams’s testimony accordingly. In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to
weigh the declarations and conclude that the lack of factual corroboration
warrants discounting the opinions expressed in the declarations.”).
Petitioner’s distinction between space-time coding and space-time block
coding in an asserted ground further undermines Petitioner’s position
regarding Alamouti’s express disclosure of space-time coding. See Pet. 43
(combining Jeon’s disclosure of “using block coding with space-time
coding” with Liu’s express disclosure of “space-time coding,” in asserting
claim 16 would have been obvious over Liu and Jeon, because Liu does not
disclose expressly “using block coding.”).
Second, even if one ordinarily skilled in the art at the time of the
invention would have understood Alamouti to have conveyed space-time
block coding, we are not persuaded that Petitioner’s proposed combination
of the general notion of space-time block coding with Narasimhan’s signal
field that indicates a particular format of a data packet would have conveyed
to a person of ordinary skill in the art “determin[ing], based on information
in the signal symbol, whether the frame is transmitted using space time
block coding,” as recited in claim 16.
IPR2015-00203
Patent 8,532,231 B2

15
Petitioner has not identified in either Narasimhan or Alamouti a signal
symbol that includes information about whether the frame is transmitted
using space-time block coding. Rather, Petitioner relies on Narasimhan’s
disclosure and Alamouti’s general disclosure of space-time block coding.
More specifically, Petitioner relies on Dr. Williams’s testimony to conclude:
Hence, exactly as Claim 16, [Narasimhan] determines
transmission diversity, e.g., use of MIMO transmitters, based
on information in the “signal symbol.”
Pet. 16 (citing Ex. 1002 ¶ 132). Claim 16, however, does not require that
transmission diversity be determined. Rather, claim 16 requires a
determination unit configured to determine, “based on information in the
signal symbol, whether the frame is transmitted using space time block
coding.” For the reasons previously discussed in Section II.B, space-time
block coding, in the context of the ’231 patent, is a block encoding method
that can be used in a MIMO system. The ’231 patent itself indicates,
however, that STBC is not used necessarily by all MIMO systems. See
Ex. 1001, 3:60–63, 10:37–40 (determining whether SDM or STBC is used in
a MIMO transmission). Thus, determining transmission diversity, or use of
MIMO transmitters, based on information in a signal symbol, is insufficient
to disclose “based on information in the signal symbol, whether the frame is
transmitted using space time block coding,” as recited in claim 16. Nor does
Petitioner provide sufficient explanation or evidence that Narasimhan’s
disclosure would have suggested a signal symbol containing information
about whether the frame is transmitted using space time block coding.
IPR2015-00203
Patent 8,532,231 B2

16
Even if a person of ordinary skill in the art would have recognized
that the combination of Narasimhan and Alamouti would have conveyed the
concept of a signal symbol containing information about whether the frame
is transmitted using space time block coding, Petitioner does not provide
sufficient explanation or evidence why one ordinarily skilled in the art
would have substituted an indicator of an encoding method (i.e., space-time
block coding) for Narasimhan’s indicator of a data packet format. KSR v.
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418–19 (“[I]t can be important to
identify a reason that would have prompted a person of ordinary skill in the
relevant field to combine the elements in the way the claimed new invention
does. This is so because inventions in most, if not all, instances rely upon
building blocks long since uncovered, and claimed discoveries almost of
necessity will be combinations of what, in some sense, is already known.”).
Thus, Petitioner has not shown that one of ordinary skill would have
combined Alamouti’s alleged general notion of space-time block coding
with Narasimhan’s signal field that indicates a particular format of a data
packet, to arrive at the claimed invention that includes determining “based
on information in the signal symbol, whether the frame is transmitted using
space time block coding” as recited in claim 16.
Third, the Petition falls short of providing articulated reasoning with
rational underpinning to support a legal conclusion that the subject matter of
claim 16 would have been obvious to one of ordinary skill in the art in view
of what Narasimhan and Alamouti would have conveyed about space-time
block coding to a person of ordinary skill in the art. KSR, 550 U.S. at 418
IPR2015-00203
Patent 8,532,231 B2

17
(“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.”) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
Petitioner contends that both space frequency encoding and space-time block
coding were known in the art and that one skilled in the art “would
appreciate the ability to select either space frequency encoding or space-time
block coding.” Pet. 13. Based on this reason and citing Dr. Williams’s
testimony, Petitioner concludes “[a]ccordingly, one of skill in the art would
have been motivated to combine the [Narasimhan] reference with the space-
time block coding of Alamouti.” Id. at 13–14 (citing Ex. 1002 ¶¶ 139–43).
Dr. Williams’s testimony cited by Petitioner, however, does not
support Petitioner’s contention that one ordinarily skilled in the art “would
have been motivated to combine” the references. See generally Ex. 1002
¶¶ 139–43. Rather, Dr. Williams testifies that one skilled in the art “would
appreciate the ability to select either space frequency encoding or space-time
block coding” (id. at ¶ 142); “would have recognized that the space-
frequency encoding in [Narasimhan] could be replaced with the space-time
block coding described in Alamouti” (id.); and “would have recognized the
benefit of using space-time block coding in Alamouti with the system
described in the [Narasimhan] reference,” without sufficiently articulating
what the benefit of using space-time block coding would have been (id. at
¶ 143). None of that testimony indicates sufficiently why one ordinarily
skilled in the art would have had reason to combine the references in the
IPR2015-00203
Patent 8,532,231 B2

18
manner claimed. Accordingly, Dr. Williams’s testimony does not provide
support for a sufficient reason why one skilled in the art would have
combined the references in the manner claimed, including a signal symbol
including information about whether a frame is transmitted using space-time
block coding, as required by claim 16. KSR, 550 U.S. at 418 (“a patent
composed of several elements is not proved obvious merely by
demonstrating that each of its elements was, independently, known in the
prior art”).
Thus, without sufficient support from Dr. Williams, Petitioner’s
rationale for modifying Narasimhan’s system with Alamouti’s alleged
space-time block coding, essentially, is that space-time block coding was
known in the art. Pet. 13. Implementing known elements to yield
predictable results and improve similar devices in the same way generally is
obvious unless the actual application is beyond the level of ordinary skill in
the art. See KSR, 550 U.S. at 416–17. Petitioner, however, does not allege,
much less support sufficiently, that Petitioner’s proposed combination would
have yielded predictable results or how Alamouti’s alleged space-time block
coding would have improved Narasimhan’s system.
For these reasons, we determine that the information presented by
Petitioner fails to establish a reasonable likelihood that it would prevail in
showing independent claim 23 or its dependent claim 20 are unpatentable
over Narasimhan and Alamouti.
Similarly, independent claim 35 also includes determining based on
information in the signal symbol, whether a frame is transmitted using space
IPR2015-00203
Patent 8,532,231 B2

19
time block coding. And each of independent claims 35, 47, and 54 recite a
signal symbol including information about space time block coding.
Ex. 1001, 18:9–16 (claim 35), 19:18–21 (claim 47), 20:18–21 (claim 54).
Petitioner relies on Narasimhan and Alamouti and makes arguments for the
information about space-time block coding in claims 35, 47, and 54 similar
to those it advanced with regard to claim 16. Pet. 18 (claim 47), 22–23
(claim 35), 30 (claim 54).
For the reasons articulated with regard to claim 16, we determine that
the information presented by Petitioner fails to establish a reasonable
likelihood that it would prevail in showing independent claims 35, 47, and
54, or dependent claims 40, 48–51, and 55–57, are unpatentable over
Narasimhan, Alamouti, and in combination with other references.
D. Asserted Grounds of Obviousness Relying on Liu and Jeon
Petitioner contends the challenged claims all would have been
obvious under § 103 over the combination of Liu and Jeon, either over the
combination alone or over the combination and various other references.
Pet. 43–59. To support these contentions, Petitioner provides explanations
and claim charts specifying where claim limitations purportedly are
disclosed or suggested in the references, and why one skilled in the art
would have combined the references. Id. Petitioner also cites the
Declaration of Dr. Williams (Ex. 1002) for support. Id. Patent Owner
challenges Petitioner’s contentions regarding Liu and Jeon. Prelim. Resp.
45–56.
IPR2015-00203
Patent 8,532,231 B2

20
We determine that the information presented by Petitioner fails to
establish a reasonable likelihood that any of the challenged claims are
unpatentable under 35 U.S.C. § 103 as obvious over Liu and Jeon for the
reasons that follow.
1. Liu
Liu describes techniques for improving the data rate of a conventional
wireless communication system based on the IEEE 802.11a standard.
Ex. 1012, 130
9
(Abstract). To accomplish that goal, Liu describes
modifying the preamble of the IEEE 802.11a packet structure to support
MIMO transmitters and receivers, while maintaining backward compatibility
with the unmodified IEEE 802.11a packet structure. Id. Among other
techniques, Liu describes using the reserved bit of the signal field in a
conventional IEEE 802.11a frame “to distinguish the MIMO from SISO
transmissions.” Id. at 131 (§ 2.1). Liu also describes using a particular
MIMO wireless communication scheme that uses the IEEE 802.11a standard
and a space-time coding scheme. Id. at 130 (§§ 1, 2.1) (describing Bell-labs’
LAyered Space-Time (i.e., “BLAST”) system).
2. Jeon
Jeon is titled “Optimal Combining of [Space-Time Block Coding] and
Spatial Multiplexing for [Multiple Antenna Systems using Orthogonal

9
In citing to Liu, we use the original page numbering of the article.
IPR2015-00203
Patent 8,532,231 B2

21
Frequency-Division Multiplexing
10
].” Ex. 1006, 1. Jeon indicates space-
time block coding involves a “[s]impler implementation than” another type
of coding—trellis coding. Id. at 6.
3. Whether Jeon is Prior Art
As an initial matter, an inter partes review may only include “a
ground that could be raised under section 102 or 103 and only on the basis of
prior art consisting of patents or printed publications.” 35 U.S.C. § 311(b).
On its face, Jeon does not appear to be a patent or a printed publication.
Jeon is a collection of fourteen pages that appear to be formatted as a slide
presentation and do not appear to be pages of a patent or printed publication.
See Ex. 1006. The pages of Jeon each include a header that presumably
identifies it as a document related to the IEEE 802.11 standard and a date
“July 2003.” See, e.g., Ex. 1006, 1 (indicating “doc.: IEEE 802.11-
03/0513r0”). The pages of Jeon also include a footer identifying the
document as a submission. See, e.g., id. (stating “Submission”).
Petitioner contends that the “Jeon Reference was submitted to IEEE”
prior to the earliest claimed effective filing date of the ’231 patent (Pet. 7),
which is consistent with the document itself. Petitioner, however, does not
offer further arguments or evidence that Jeon is a patent or printed
publication under 35 U.S.C. § 102(b). A “printed publication” under
§ 102(b) “has been interpreted to mean that before the critical date the

10
See Ex. 1012, 130 (Abstract) (indicating OFDM is an acronym for
orthogonal frequency-division multiplexing).
IPR2015-00203
Patent 8,532,231 B2

22
reference must have been sufficiently accessible to the public interested in
the art; dissemination and public accessibility are the keys to the legal
determination whether a prior art reference was ‘published.’” In re Cronyn,
890 F.2d 1158, 1160 (Fed. Cir. 1989) (quoting Constant v. Advanced Micro-
Devices, Inc., 848 F.2d 1560, 1568 (Fed. Cir. 1988)).
Even if we were to consider the testimony of the Williams Declaration
that asserts “Jeon is an IEEE presentation submitted to the high throughput
study group” (Ex. 1002 § 155), which is not cited by the Petition, Petitioner
does not present sufficient facts and circumstances around the reference’s
disclosure to members of the public to conclude that the reference is a
printed publication. See In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir.
2004) (indicating that the determination of whether a reference qualifies as a
printed publication “involves a case-by-case inquiry into the facts and
circumstances surrounding the reference’s disclosure to members of the
public”); see also SRI Int’l, Inc. v. Internet Sec. Sys. Inc., 511 F.3d 1186
(Fed. Cir. 2008) (vacating and remanding grant of summary judgment due to
issues of material fact as to whether second submitted paper was publicly
accessible). For this reason alone, we determine that the information
presented by Petitioner fails to establish a reasonable likelihood that it would
prevail on this challenge.
4. Independent Claim 16 and
Dependent Claim 20
Alternatively, even assuming Jeon is prior art, we are not persuaded
that Petitioner has established a reasonable likelihood it would prevail in this
IPR2015-00203
Patent 8,532,231 B2

23
asserted ground. Petitioner, relying on testimony from Dr. Williams,
contends that Liu teaches or suggests all of the features recited by
independent claim 16, except for space-time block coding, which is taught
by Jeon. Pet. 43–45. More specifically, Petitioner relies on Liu’s disclosure
of modifying the IEEE 802.11a packet structure to support MIMO
transmitters and receivers, while maintaining backward compatibility with
the unmodified IEEE 802.11a packet structure. Id. at 43.
For the “determin[ing], based on information in the signal symbol,
whether the frame is transmitted using space time block coding,” recited in
independent claim 16, Petitioner relies on a combination of Liu and Jeon.
Petitioner has not identified in either Liu or Jeon a signal symbol that
includes information about whether a frame is transmitted using space-time
block coding. Rather, Petitioner relies on Liu’s disclosure that the reserved
bit of the signal field in an IEEE 802.11a frame “can be used to distinguish
the MIMO from SISO transmissions,” and on Liu’s disclosure of space-time
coding. Id. at 45. Because Liu does not disclose expressly “using block
coding,” Petitioner contends Jeon’s alleged disclosure of “using block
coding with space-time coding” with Liu’s express disclosure of “space-time
coding” discloses or suggests “determin[ing], based on information in the
signal symbol, whether the frame is transmitted using space time block
coding,” recited in claim 16. Id.
Petitioner further contends that one of ordinary skill in the art would
have had reason to use Jeon’s space-time block coding with Liu’s space-time
coding “for a less complex MIMO coding system.” Id. at 43 (citing 1002
IPR2015-00203
Patent 8,532,231 B2

24
¶¶ 158-59). Patent Owner challenges Petitioner’s contentions. Prelim.
Resp. 45–50.
We are not persuaded that Petitioner’s proposed combination of
Jeon’s space-time block coding with Liu’s space-time coding, along with
Liu’s reserved bit of the signal field in an IEEE 802.11a frame to distinguish
a multiple antenna transmission from a single antenna transmission
(disclosed in Liu), properly accounts for “determin[ing], based on
information in the signal symbol, whether the frame is transmitted using
space time block coding,” as recited in claim 16. Petitioner does not
adequately address this critical issue. See generally Pet. 43–45. Rather,
Petitioner articulates a reason for generally combining Liu’s system with
Jeon’s disclosure of space-time block coding—that is, because a multiple
antenna system could be implemented more simply. Id. at 43. We agree
with Patent Owner that Petitioner does not explain adequately the relevance
of Jeon’s statement, such as explaining how Liu’s BLAST coding uses the
inferior coding scheme (trellis coding) mentioned in Jeon, or explaining how
Jeon’s statement is relevant to a comparison between space-time block
coding and Liu’s space-time coding scheme (BLAST). Prelim. Resp. 46.
Petitioner’s contention in large measure amounts to demonstrating that
space-time block coding was known in the prior art, which is not sufficient.
KSR, 550 U.S. at 418 (holding that obviousness cannot be established
“merely by demonstrating that each of the elements was, independently,
known in the prior art”).
IPR2015-00203
Patent 8,532,231 B2

25
Further, Petitioner does not explain sufficiently, much less provide
supporting evidence, how substituting space-time block coding for Liu’s
space-time coding would have prompted a person of ordinary skill to
combine the elements in the way the claimed invention does. Id. at 418–19
(“[I]t can be important to identify a reason that would have prompted a
person of ordinary skill in the relevant field to combine the elements in the
way the claimed new invention does. This is so because inventions in most,
if not all, instances rely upon building blocks long since uncovered, and
claimed discoveries almost of necessity will be combinations of what, in
some sense, is already known.”). Petitioner has not addressed sufficiently
why one of ordinary skill in the art would have modified Liu’s use of the
reserved bit to distinguish multiple antenna transmissions from single
antenna transmissions to use the reserved bit to include information about
whether a frame is transmitted using a particular encoding scheme (i.e.,
space-time block coding). See Ex. 1001, claim 16 (“determin[ing], based on
information in the signal symbol, whether the frame is transmitted using
space time block coding.”) Thus, Petitioner has not articulated sufficiently
why one ordinarily skilled in the art would have found the subject matter of
claim 16 as a whole obvious in view of Liu and Jeon.
For the foregoing reasons, we determine that the information
presented by Petitioner fails to establish a reasonable likelihood that it would
prevail in showing independent claim 16 or its dependent claim 20 are
unpatentable over Liu and Jeon.
IPR2015-00203
Patent 8,532,231 B2

26
5. Remaining Challenged Claims
Similar to claim 16, independent claim 35 also includes determining
based on information in the signal symbol, whether a frame is transmitted
using space time block coding. And each of independent claims 35, 47, and
54 recite a signal symbol including information about space time block
coding. Ex. 1001, 18:9–16 (claim 35), 19:18–21 (claim 47), 20:18–21
(claim 54). Petitioner relies on Liu and Jeon and makes arguments for the
information about space-time block coding in claims 35, 47, and 54 similar
to those it advanced with regard to claim 16. Pet. 46–47 (claim 47), 48–50
(claim 35), 52–54 (claim 54).
For the reasons articulated with regard to claim 16, we determine that
the information presented by Petitioner fails to establish a reasonable
likelihood that it would prevail in showing independent claims 35, 47, and
54, or dependent claims 40, 48–51, and 55–57 are unpatentable over Liu,
Jeon, and in combination with other references.
III. CONCLUSION
For the foregoing reasons, we conclude that there is not a reasonable
likelihood that Petitioner would prevail in showing that claims 16, 20, 35,
40, 47–51, and 54–57 of the ’231 patent are unpatentable.
IPR2015-00203
Patent 8,532,231 B2

27
IV. ORDER
Upon consideration of the record before us, it is
ORDERED that the Petition is denied as to all challenged claims, and
no trial is instituted.
For PETITIONER:

Paul Hunter
Christopher C. Bolten
Troy D. Smith
Foley & Lardner LLP
phunter@foley.com
cbolten@foley.com
tdsmith@foley.com

Steven A. Moore
Richard W. Thill
Pillsbury Winthrop Shaw Pittman LLP
steve.moore@pillsburylaw.com
richard.thill@pillsburylaw.com

For PATENT OWNER:

SPH
Wayne Helge
Donald Jackson
Davidson Berquist Jackson & Gowdey L.L.P.
whelge@dbjg.com
djackson@dbjg.com
ETRI
HUNTON & WILLIAMS LLP
INTELLECTUAL PROPERTY DEPARTMENT
sloftis@hunton.com