PTAB

IPR2017-00068

Apple Inc v. Evolved Wireless LLC

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1. Case Identification

2. Patent Overview

  • Title: Method of Transmitting Data in a Mobile Communication System
  • Brief Description: The ’481 patent discloses methods and transmitters for sending data in a mobile communication system. The technology centers on generating a preamble sequence for a Random Access Channel (RACH) by repeating a specific base sequence multiple times to form a consecutive sequence, which is then prepended with a single cyclic prefix (CP).

3. Grounds for Unpatentability

Ground 1: Obviousness of Claims 1-2 and 8-9 over Panasonic 792

  • Prior Art Relied Upon: Panasonic 792 (3GPP Tdoc R1-060792, March 2006).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Panasonic 792, a 3GPP contribution document, discloses every limitation of independent claims 1 and 8. Its Figure 1 illustrates a RACH preamble structure comprising M repetitions of a CAZAC sequence, preceded by a single CP. This structure directly maps to the claimed method of "repeating a specific sequence...N times to generate a consecutive sequence" and "concatenating a single cyclic prefix (CP) to a front end." Panasonic 792 further discloses transmitting this preamble from user equipment (UE) to a Node B, satisfying the transmission step. Dependent claims 2 and 9, which specify the base sequence is a Constant Amplitude Zero Auto Correlation (CAZAC) sequence, were asserted to be met as Panasonic 792 explicitly labels the repeated sequences as "CAZAC sequence."

Ground 2: Obviousness of Claims 3-4 and 10-11 over Panasonic 792 in view of Panasonic 114

  • Prior Art Relied Upon: Panasonic 792 (3GPP Tdoc R1-060792) and Panasonic 114 (3GPP Tdoc R1-061114, May 2006).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon Panasonic 792's disclosure of the basic preamble structure. To meet the limitations of claims 3 and 10, which require "applying a cyclic shift" to the CAZAC sequence, Petitioner relied on Panasonic 114. Panasonic 114 explicitly proposed to "choose cyclic-shifted Zadoff-Chu CAZAC as preamble sequence mainly." For claims 4 and 11, which require the shift value to be an "integer multiple of a predetermined circular shift unit," Petitioner pointed to Figure 1 of Panasonic 114, which shows indices of cyclic shifts ranging from 1 to 8, representing integer multiples of a base shift unit.
    • Motivation to Combine: Petitioner argued a person of ordinary skill in the art (POSITA) would combine these references. Both were 3GPP contributions from Panasonic to the same working group (WG1) in early 2006, addressing the same problem of optimizing RACH preamble design. Panasonic 114 expressly cited Panasonic 792 and concluded that cyclic-shifted CAZAC sequences offer "superior performance" over the non-shifted sequences in Panasonic 792. This direct comparison and statement of improvement provided a strong motivation to substitute the better-performing sequences from Panasonic 114 into the preamble structure taught by Panasonic 792.
    • Expectation of Success: A POSITA would have a reasonable expectation of success because the combination involved replacing a known sequence type with a known, improved variant within an established and compatible preamble framework.

Ground 3: Obviousness of Claims 6 and 13 over Panasonic 792, Panasonic 114, and Chu

  • Prior Art Relied Upon: Panasonic 792, Panasonic 114, and Chu ("Polyphase Codes with Good Periodic Correlation Properties," July 1972).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground addressed claims 6 and 13, which further require that applying the cyclic shift "comprises multiplying said specific sequence by an exponential sequence." While the Panasonic references teach the use of cyclic-shifted Zadoff-Chu sequences, Petitioner asserted they do not explicitly describe this method of application. For this, Petitioner introduced Chu, the seminal 1972 paper that first introduced what became known as the Zadoff-Chu sequence. Chu taught that "trivial variations such as cyclic shifts" could be applied through "certain linear phase shifts of the form exp(2πqk/N)," which is mathematically equivalent to multiplying the sequence by an exponential sequence.
    • Motivation to Combine: Petitioner contended that a POSITA, seeking to implement the cyclic-shifted Zadoff-Chu sequences proposed in the Panasonic references, would have been logically and predictably led to consult the foundational Chu paper. This motivation was strengthened because both Panasonic 792 and Panasonic 114 expressly cited Chu. A POSITA would consult Chu to understand the fundamental properties and mathematical implementation of the sequences, where they would have found the explicit teaching of using an exponential multiplier to achieve the desired cyclic shift.

4. Key Claim Construction Positions

  • Petitioner argued for a specific construction of the term "consecutive sequence having a length (N*L)" based on prosecution history.
  • During prosecution of the application for the '481 patent, the applicant distinguished the claims over a prior art reference (Jung) by arguing that Jung’s preamble was split between multiple transmission frames and was therefore not "consecutive." Petitioner contended this argument created a clear disavowal of scope, requiring the term to be construed as a sequence that is "entirely within one frame."

5. Arguments Regarding Discretionary Denial

  • Petitioner acknowledged that the petition was filed more than one year after service of an infringement complaint. However, the petition was filed concurrently with a Motion for Joinder to an already-instituted IPR (IPR2016-00758). Petitioner argued that under 35 U.S.C. § 315(c), the one-year time bar of § 315(b) "shall not apply to a request for joinder." Therefore, Petitioner asserted that discretionary denial based on the statutory time bar would be legally improper.

6. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-4, 6, 8-11, and 13 of the ’481 patent as unpatentable.