Exhibit 12

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Trials@uspto.gov Paper 12

571-272-7822 Date: July 15, 2024

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

ERICSSON INC. and NOKIA OF AMERICA CORPORATION,

Petitioner,

v.

XR COMMUNICATIONS LLC,

Patent Owner.

IPR2024-00314

Patent 7,177,369B2

Before BARBARA A. PARVIS, JAMES J. MAYBERRY, and 

NORMAN H. BEAMER, Administrative Patent Judges.

MAYBERRY, Administrative Patent Judge. 

DECISION

DenyingInstitution of Inter PartesReview

35 U.S.C. § 314

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I. INTRODUCTION

A. Background and Summary

Ericsson Inc. and Nokia of America Corporation (collectively, 

“Petitioner”) filed a Petition requesting inter partesreview of claims 1–7, 9, 

10, 12–15, 19, 21, 28, 32, 33, 35–37, and 41 (the “Challenged Claims”) of 

U.S. Patent No. 7,177,369 B2 (Ex. 1001, the “’369 patent”). Paper 3

(“Pet.”), 1. XR Communications LLC(“Patent Owner”) filed a Preliminary 

Response to the Petition. Paper 7 (“Prelim. Resp.”). With our 

authorization,1 Petitioner filed a Preliminary Reply (“Prelim. Reply,” 

Paper 9) and Patent Owner filed a Preliminary Sur-reply (“Prelim. 

Sur-reply,” Paper 10). 

We have authority to determine whether to institute an inter partes

review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024) (permitting the 

Board to institute trial on behalf of the Director). To institute an inter partes

review, we must determine that the information presented in the Petition 

shows “a reasonable likelihood that the petitioner would prevail with respect 

to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). 

For the reasons set forth below, we do not institute an inter partesreview. 

B. Real Parties-in-Interest

Petitioner identifies “Ericsson Inc., and corporate parent 

Telefonaktiebolaget LM Ericsson, and Nokia of America Corporation” as 

real parties-in-interest. Pet. 73. Additionally, Petitioner identifies 

1 See Paper 8, 3–4 (“[W]e authorize Petitioner to file a Preliminary Reply to

address the propriety of Patent Owner’s claim construction of the term ‘preequalization parameter.’ . . . We also authorize Patent Owner to file a 

Preliminary Sur-reply to respond to Petitioner’s arguments.”). 

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“T-Mobile USA, Inc., AT&T Services Inc., AT&T Mobility LLC, AT&T 

Corporation, and Cellco Partnership d/b/a Verizon Wireless because 

Petitioner’s products provided to these entities have been accused of 

infringement” in related matters. Id.

Patent Owner identifies “XR Communications LLC d/b/a Vivato 

Technologies” as a real party-in-interest. Paper 4, 2. 

C. Related Matters

The parties each identifythe following litigations as mattersrelated to 

the ’369 patent: XR Communications LLC v. AT&T Services Inc., AT&T 

Mobility LLC, and AT&T Corp., No. 2:23-cv-00202 (E.D. Tex.); XR 

Communications LLC v. Verizon Communications, Inc. and Cellco 

Partnership d/b/a Verizon Wireless, No. 2:23-cv-00203(E.D. Tex.); and XR 

Communications LLC v. T-Mobile USA, Inc., No. 2:23-cv-00204 (E.D. Tex).

Pet. 73–74; Paper 4, 2.

D. The ’369 Patent

The ’369 patent, titled “Multipath Communication Methods and 

Apparatuses,” issued February 13, 2007, from U.S. patent application

10/131,864. Ex. 1001, codes(54), (45), (21). The ’369 patent 

claims priority to U.S. provisional application 60/287,163, filed on April 27, 

2001. Id. at code (60).

The ’369 patent relates to “wireless communication in a multipath 

signal propagation environment.” Ex. 1001, 1:16–17. The ’369 patent states

that in wireless networks as users may move freely about a coverage area, 

“there will not always be a clear or otherwise unobstructed communication 

path between a transmitting network resource and the receiving device.” Id.

at 1:46–52. As a result, there may be multipath propagation of transmitted 

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signals due to “reflections and diffraction from objects in the coverage area.” 

Id. at 3:10–14. “High data rate communication systems may be subject to 

detrimental intersymbol interference caused by such multi-path propagation 

or fading.” Id. at 3:15–17. The ’369 patent notes the shortcomings of prior 

modulation and antenna techniques for overcoming this problem (see id. at 

3:33–7:4), and proposes equalization techniques “for use at a transmitting 

node and configured to perform pre-equalization that substantially reduces 

unwanted effects associated with multipath fading.” Id. at 7:14–19. In 

particular, the described techniques employ “training sequences, which are 

contained within a reverse link received OFDM [(Orthogonal Frequency 

Division Multiplexing)] burst, to specifically adjust associated transmission 

signals/parameters applied to subsequent OFDM transmissions back towards 

that particular node.” Id. at 8:4–8.

Figure 1, reproduced below, illustrates “a communication system 

operating in a multipath environment.” Ex. 1001, 2:32–33.

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As shown in Figure 1, system 100 includes base station 102 and customer 

premise equipment (CPE) device 104, which communicate with each other 

over a wireless communication link. Id. at 8:16–21. Transmission 109 from 

base station 102 takes a direct path to CPE device 104, but also “radiates and 

is reflected or diffused, for example, by one or more objects 110,” causing 

“multipath propagation signal 111 to be directed towards CPE device 104.” 

Id. at 8:32–39.

Figure 3, reproduced below, illustrates “certain functions within a 

transceiver functional block.” Ex. 1001, 2:40–41.

As shown in Figure 3, in transceiver 204 “coded data to be transmitted from 

base station device 102 to CPE device 104” may be pre-equalized before 

being transmitted. Id. at 9:49–52. Transceiver 204 includes OFDM 

processing block 302 for generating “Quadrature Phase Shift Keying 

(QPSK) modulation values for each of forty-eight OFDM sub-carriers,”

which are output to pre-equalization block 304. Id. at 9:56–62. 

“Pre-equalization block 304 is configured to modify one or more of the 

OFDM modulated sub-carriers based on information from a reverse link 

processing block 308,” which is “configured to identify multipath 

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propagation delays and/or problems for packets transmitted from CPE 

device 104 to base station device 102.” Id. at 9:63–10:1.

E. Challenged Claims

The Petition challenges claims1–7, 9, 10, 12–15, 19, 21, 28, 32, 33, 

35–37, and 41. Pet. 13. Claim 1 is the sole independent claim, which we 

reproduce below.

1. A method comprising:

[1.0] identifying at least one multipath transmission delay 

within a reverse path data signal received from a receiving 

device;

[1.1] determining at least one forward path preequalization parameter based on said at least one transmission 

delay; and

[1.2] modifying a forward path data signal that is to be 

transmitted to the receiving device based on said at least one 

forward path pre-equalization parameter, where said modifying 

includes selectively setting different transmission power levels 

for at least two Orthogonal Frequency Division Multiplexing 

(OFDM) tones in said forward path data signal.

Ex. 1001, 16:57–17:3.

2

 

2 We provide labeling based on Petitioner and Patent Owner’s numbering of 

the claim limitations. See Pet. 20, 35; Prelim. Resp. 4.

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F. Prior Art and Asserted Grounds

Petitioner asserts that the Challenged Claims are unpatentable based 

on two grounds: 

Claims Challenged 35 U.S.C. § References/Basis

1–7, 9, 10, 12–15, 41 103(a)3 Wong4, or Wong and Minn5

15, 19, 21, 28, 32, 33, 

35–37 103(a) Wong, or Wong and Minn, and Lehne6

Pet. 13. 

Petitioner also relies on the declaration testimony of Dr. Kevin Negus. 

Ex. 1003. 

The following subsections provide brief descriptions of the asserted 

prior art references. 

1. Wong (Ex. 1005) 

Wong, titled “Multiuser OFDM with Adaptive Subcarrier, Bit, and 

Power Allocation.” Ex. 1005, 1747. 7

 Wong provides that it has been 

3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 

Stat. 284, 296–07 (2011), took effect on September 16, 2011. The changes to 

35 U.S.C. §§ 102 and 103 in the AIA do not apply to any patent application 

filed before March 16, 2013. Because the ’369 patent was filed before

March 16, 2013, we refer to the pre-AIA version of the statute. 

4 Multiuser OFDM with Adaptive Subcarrier, Bit, and Power Allocation, 

IEEE Journal on Selected Areas in Communications, Vol. 17, No. 10, Oct. 

1999 (Ex. 1005, “Wong”).

5 An Investigation into Time-Domain Approach for OFDM Channel 

Estimation, IEEE Transactions on Broadcasting, Vol. 46, No. 4, Dec. 2000

(Ex. 1006, “Minn”). 

6 An Overview of Smart Antenna Technology for Mobile Communications 

Systems, IEEE Communications Surveys, Vol. 2, No. 4, 4th Quarter 1999

(Ex. 1010, “Lehne”). 

7 We refer to Wong’s article pagination, consistent with Petitioner’s practice 

in discussing Wong.

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“demonstrated that significant performance improvement can be achieved if 

adaptive modulation is used with OFDM,”where “subcarriers with large 

channel gains employ higher order modulation to carry more bits/OFDM 

symbol, while subcarriers in deep fade carry one or even zero bits/symbol.” 

Id. In a multiuser environment, however, “the subcarriers which appear in 

deep fade to one user may not be in deep fade for other users.” Id. Wong

thus describes “an adaptive multiuser subcarrier allocation scheme where the 

subcarriers are assigned to the users based on instantaneous channel 

information.” Id. In this way, Wong aims “to minimize the overall transmit 

power by allocating the subcarriers to the users and by determining the 

number of bits and the power level transmitted on each subcarrier based on 

the instantaneous fading characteristics of all users.” Id.

2. Minn (Ex. 1006)

Minn, titled “An Investigation into Time-Domain Approach for 

OFDM Channel Estimation,” notes that OFDM “has recently achieved much 

popularity due to its desirable properties such as its robustness to multipath 

delay spread and impulse noise, its high data rate transmission capability 

with high bandwidth efficiency, and its feasibility in application of adaptive 

modulation and power allocation across the subcarriers according to the 

channel conditions.” Ex. 1006, 1. Minn proposes “a time-domain approach 

for OFDM channel estimation.” Id. In particular, Minn describes that “[f]or 

practical multipath wireless channels, there are not so many channel paths 

with significant energy,” and so “among N samples (taps) of the channel 

impulse response estimate, many samples (taps) will have little or no energy 

at all except noise perturbation.” Id. at 3. “[N]eglecting those 

nonsignificant channel estimate taps can improve the channel estimation 

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performance significantly and this fact is applied in the proposed method.” 

Id. In one approach that involves selecting the most significant channel taps, 

Minn describes that “[i]f the channel path gains remain essentially the same 

over an OFDM symbol interval,” “then the received samples corresponding 

to time-domain pilot samples contain Krepeated version[s] of scaled 

channel impulse response.” Id. at 4. “In order to choose most significant 

channel taps, those K parts can be averaged so that the noise variance is 

reduced by K times and more reliable most significant channel taps can be 

obtained.” Id. Alternatively, Minn describes “selecting the channel taps 

whose energy is above a threshold.” Id.

3. Lehne (Ex. 1010)

Lehne, titled “An Overview of Smart Antenna Technology for Mobile 

Communications Systems,” relates to “smart or adaptive antennas for mobile 

communications.” Ex. 1010, 1 (Abstract). In particular, Lehne describes 

that omnidirectional base station antennasin cellular systems can waste 

power or cause interference, but that “[s]mart antennas will lead to a much 

more efficient use of the power and spectrum, increasing the useful received 

power as well as reducing interference.” Id. at 2. 

II. ANALYSIS OF PETITIONER’S CHALLENGES

A. Applicable Law

Petitioner’s asserted grounds of unpatentability are based on

obviousness under 35 U.S.C. § 103(a). Under § 103(a), 

[a] patent may not be obtained though the invention is not 

identically disclosed or described as set forth in section 102, if 

the differences between the subject matter sought to be patented 

and the prior art are such that the subject matter as a whole would 

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have been obvious at the time the invention was madeto a person 

having ordinary skill in the art to which said subject matter

pertains. Patentability shall not be negatived by the manner in 

which the invention was made.

35 U.S.C. § 103(a)(2004); see KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 

406 (2007). The question of obviousness is resolved on the basis of 

underlying factual determinations, including: (1) the scope and content of 

the prior art; (2) any differences between the claimed subject matter and the

prior art; (3) the level of ordinary skill in the art; and (4) when available, 

objective evidence, such as commercial success, long felt but unsolved 

needs, and failure of others. Graham v. John Deere Co., 383 U.S. 1, 17–18 

(1966); see KSR Int’l Co., 550 U.S. at 407 (“While the sequence of these 

questions might be reordered in any particular case, the [Graham] factors 

continue to define the inquiry that controls.”). The Court in Graham

explained that these factual inquiries promote “uniformity and definiteness,” 

for “[w]hat is obvious is not a question upon which there is likely to be 

uniformity of thought in every given factual context.” 383 U.S. at 18.

The Supreme Court made clear that we apply “an expansive and 

flexible approach” to the question of obviousness. KSR Int’l Co., 550 U.S. 

at 415. Whether a patent claiming the combination of prior art elements 

would have been obvious is determined by whether the improvement is more 

than the predictable use of prior art elements according to their established 

functions. Id. at 417. To support this conclusion, however, it is not enough 

to show merely that the prior art includes separate references covering each 

separate limitation in a challenged claim. Unigene Labs., Inc. v. Apotex, 

Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). Rather, obviousness 

additionally requires that a person of ordinary skill at the time of the 

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invention “would have selected and combined those prior art elements in the 

normal course of research and development to yield the claimed invention.” 

Id.

“[O]bviousness must be determined in light of all the facts, and . . . a 

given course of action often has simultaneous advantages and disadvantages, 

and this does not necessarily obviate motivation to combine” teachings from 

multiple references. Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 

(Fed. Cir. 2006) (emphasis added); see also PAR Pharm., Inc. v. TWI 

Pharms., Inc., 773 F.3d 1186, 1196 (Fed. Cir. 2014) (“The presence or 

absence of a motivation to combine references in an obviousness 

determination is a pure question of fact.”). As a factfinder, we also must be 

aware “of the distortion caused by hindsight bias and must be cautious of 

arguments reliant upon ex post reasoning.” KSR Int’l Co., 550 U.S. at 421.

For institution, “[t]he ‘reasonable likelihood’ standard is a somewhat 

flexible standard that allows the Board room to exercise judgment.” Patent 

Trial and Appeal Board Consolidated Trial Practice Guide 53 (Nov. 2019), 

available at https://www.uspto.gov/TrialPracticeGuideConsolidated. 

B. Level of Ordinary Skill in the Art

The level of skill in the art is “a prism or lens” through which we view 

the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 

1350, 1355 (Fed. Cir. 2001). Petitioner contendsthat 

a [person having ordinary skill in the art] in April 2001 would 

have been familiar with wireless communications networks, 

equipment and integrated circuit chips, and would have had at 

least a working knowledge of the design of physical layer signal 

processing for Orthogonal Frequency Division Multiplexing 

(OFDM) wireless communications including the use of multiple 

antennas. A [person having ordinary skill in the art] would have 

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had at least a Bachelor’s degree in Electrical Engineering or an 

equivalent field, and at least two years of work experience in 

developing OFDM-based wireless communications. 

Alternatively, a [person having ordinary skill in the art] would 

have had a more advanced degree, such as a Master’s degree in 

Electrical Engineering or an equivalent field, combined with at 

least one year of work experience in developing OFDM-based 

wireless communications.

Pet. 10 (referencingEx. 1003 ¶¶ 22–27). Patent Owner does not dispute the 

level of ordinary skill in the art. Prelim. Resp. 7. 

We apply Petitioner’s definition of the level of ordinary skill in the 

art. We determine that this definition is consistent with the prior art of 

record and the skill reflected in the Specification of the ’369 patent, based on 

our review of the limited record. 

C. Claim Construction

In inter partes reviews, we interpret a claim “using the same 

claim construction standard that would be used to construe the claim in a 

civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). Under this 

standard, we construe the claim “in accordance with the ordinary and 

customary meaning of such claim as understood by one of ordinary skill in 

the art and the prosecution history pertaining to the patent.” Id.;see Phillips 

v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc) (“We 

have frequently stated that the words of a claim ‘are generally given their 

ordinary and customary meaning.’” (quotingVitronics Corp. v. 

Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)).

Petitioner “proposes that each claim term be given its plain and 

ordinary meaning.” Pet. 9. “Patent Owner agrees that the terms of claim 1 

of the ’3[69] patent carry their plain and ordinary meaning” and that “formal 

claim constructions may be unnecessary.” Prelim. Resp. 8. Patent Owner 

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adds, however, that “the plain and ordinary meaning of ‘pre-equalization 

parameter’ is parameter used to perform pre-equalization,” and that “the 

plain and ordinary meaning of ‘pre-equalization’ in the ’369 patent is 

modifying a signal to reduce unwanted effects associated with multipath 

fading between the transmitter and the receiver.” Id. (referencing Ex. 1001, 

7:15–20); see also id. at 12–16. We address the “pre-equalization 

parameter” term below.

1. “Pre-equalization parameter”

As we indicate above, Patent Owner expressly construes the term 

“pre-equalization” to mean a parameter that modifies a signal to reduce 

unwanted effects associated with multipath fading between the transmitter 

and the receiver. Prelim. Resp. 8. Patent Owner adds that it “believes that 

the[] plain meaning interpretation[][is] correct and helpful, but Patent 

Owner does not believe that formally adopting [it]is necessary to deny 

institution.” Id. at 9.

Petitioner responds that “[t]he claim already recites that ‘preequalization’performs a very specific action.” Prelim. Reply 1. Petitioner 

argues that Patent Owner’s express construction is improper, as it imports 

Patent Owner’s intended purpose into the claim term. Id.; see also id. at 2 

(“[Patent Owner’s] intended purpose improperly reads an ‘intent’ element 

into the claims.”). 

Patent Owner replies that “‘[p]re-equalization’ is a technical term of 

art and has a plain meaning.” Prelim. Sur-reply 1. Patent Owner adds that, 

“in the context of [the] ’369 patent, is modifying a signal to reduce 

unwanted effects associated with multipath fading between the transmitter 

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and the receiver.” Id. Patent Owner argues that Petitioner reads the work 

“pre-equalization” out of the claim term. Id. at 1–2. 

We start with the words of the claim. See, e.g., Phillips, 415 F.3d at 

1314 (“[T]he context in which a term is used in the . . . claim [at issue] can 

be highly instructive.”). As an initial point, the term recites more than just a 

parameter. Instead, it recites a pre-equalizationparameter. See Wasica Fin. 

GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1288 n.10 (Fed. Cir. 2017) 

(“It is highly disfavored to construe terms in a way that renders them void, 

meaningless, or superfluous.”); see also Bicon, Inc. v. Straumann Co., 441 

F.3d 945, 950 (Fed. Cir. 2006) (“[C]laims are interpreted with an eye toward 

giving effect to all terms in the claim.”); cf. Prelim. Sur-reply 2 (referencing 

Dr. Negus’s declaration,Ex. 1003 ¶ 285); Ex. 1003 ¶ 285 (“[T]he plain, 

ordinary meaning of the term ‘forward path pre-equalization parameter’

for wireless communications systems at the time of the alleged invention of 

the ‘369 [p]atent is then simply a ‘parameter’ used for any part in 

performing ‘forward path pre-equalization.’”). As Dr. Negus testifies, 

pre-equalization “in some way . . . accounts for the properties of the 

propagation path(s) between” a transmitter and a receiving device. Ex. 1003 

¶ 284; see Prelim. Sur-reply 1 (“‘Pre-equalization’is a technical term of art 

and has a plain meaning.”); cf. Ex. 2001 (defining “pre-equalization” in 

general as “[a] process in a system designed to . . . reduce adverse effects, 

such as noise, in subsequent parts of the system”). 

In determining the pre-equalization parameter, claim 1 first recites the 

step of “identifying at least one multipath transmission delay within a 

reverse path data signal received from a receiving device.” Ex. 1001, 

16:58–60. Then, claim 1 recites the step of “determining at least one 

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forward path pre-equalization parameter based on said at least one 

transmission delay.” Id. at 16:61–62. So, the pre-equalization parameter 

(or, more completely, the forward path pre-equalization parameter) is based 

on a multipath transmission delay identified from a reverse path signal sent

from a receiving device. The final step recites “modifying a forward path 

data signal that is to be transmitted to the receiving device based on said at 

least one forward path pre-equalization parameter.” Id. at 16:64–66. So, the 

forward path pre-equalization parameter is applied to a forward path data 

signal being sent to the receiving device to modify the signal. We also know 

from claim 1 that modifying of the signal “includes selectively setting 

different transmission power levels for at least two Orthogonal Frequency 

Division Multiplexing (OFDM) tones in said forward path data signal.” Id.

at 16:66–17:3. 

Accordingly, we understand the term pre-equalization parameterto 

encompass a parameter used for pre-equalization, that is, to account for 

properties of a propagation path between a transmitter and a receiving 

device, where the parameter is based on at least one multipath transmission 

delay identifiedfrom a reverse path data signal received from the receiving 

device and where a forward path data signal is modified based on the 

parameter. 

This understanding is consistent with the Specification. Cf. Phillips, 

415 F.3d at 1315 (“[T]he specification ‘is always highly relevant to the 

claim construction analysis.’”). For example, the ’369 patent states that 

“[t]he exemplary OFDM pre-equalization technique basically acts within the 

frequency band of OFDM sub-carriers to pre-equalize the multipath channel 

to handle multipath delay spread greater than the delay protection provided 

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by conventional signal processing techniques.” Ex. 1001, 7:63–81; see also 

id. at 9:63–65 (“Pre-equalization block 304 is configured to modify one or 

more of the OFDM modulated sub-carriers based on information from a 

reverse link processing block 308.”), 10:1–10 (explaining how a base station 

may use a known sequence of tones from a user device to determine 

differences between a received signal and the known signal, such that “[t]he 

differences, or information derived from such differences can . . . be used 

within pre-equalization block 304 to modify, in some manner, as applicable, 

the OFDM modulated sub-carriers”); cf. Ex. 1003 ¶ 284 (“Although the ‘369 

[p]atent does not explicitly define the term ‘pre-equalization,’ a [person 

having ordinary skill in the art] would [have]under[stood] that usage of the

term . . . within the ‘369 [p]atent is consistent with th[e] plain, ordinary 

meaning.”). 

We agree with Petitioner that Patent Owner’s inclusion of the phrase 

“associated with multipath fading between the transmitter and the receiver” 

goes beyond the plain and ordinary meaning, as pre-equalization is not so 

limited. See, e.g., Ex. 1003 ¶¶ 284–285 (discussing the meaning of “preequalization parameter”); Ex. 2001 (providing an IEEE definition of “preequalization”). 

We need not construe the term “pre-equalization parameter” beyond 

our above-stated understanding of the term’s scope, as this understanding is 

sufficient to resolve the parties’ dispute. See Realtime Data, LLC v. Iancu, 

912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe 

‘only those terms that . . . are in controversy, and only to the extent 

necessary to resolve the controversy.’” (emphasis added)) (quoting Vivid 

Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).

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2. Other terms

We determine that we need not expressly construe any other 

claim terms to resolve the parties’ disputes on the current record. See 

Realtime Data, LLC, 912 F.3d at 1375. To the extent that the scope of any 

other claim term requires discussion, however, we provide it in our 

assessment of the challenges, which we turn to next.

D. Ground 1: Claims 1–7, 9, 10, 12–15, and 41 as Obvious over 

Wong, or Wong and Minn

Petitioner contends that Wongalone, or the combination of Wong and 

Minn,8 renders obvious claims 1–7, 9, 10, 12–15, and 41. Pet. 16–47. We 

address Petitioner’s contentions, and Patent Owner’s counter-arguments, 

below.

1. Independent claim 1

We turn to analyzing the scope and content of the prior art, and any 

differences between the prior art and the claimed invention, on a limitationby-limitation basis.

8 Petitioner states that, “[t]o the extent that [Patent Owner] asserts that Wong 

does not expressly recite using ‘multipath transmission delay’ as the channel 

information, Minn expressly teaches the details for calculating the channel 

information using a time-domain approach which identifies multipath 

transmission delay.” Pet. 27. Because Patent Owner did not dispute that 

Wong teaches or suggests multipath transmission delay, we do not address 

Petitioner’s contentions with respect to Minn. Cf.Prelim. Resp. 17 (“For 

claim element [1.1], the Petition asserts that ‘channel gain magnitude’is the 

claimed ‘forward-path pre-equalization parameter.’” This assertion is the 

same regardless of whether the Petition relies on Wong or Minn or a 

combination of both.”).

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a) Petitioner’s Contentions: Limitations[1.0] and 

[1.1]

Claim 1 recites “[a] method comprising: identifying at least one 

multipath transmission delay within a reverse path data signal received from 

a receiving device.” Ex. 1001, 16:57–60 (limitation [1.0], the identifying 

step). Claim 1 also recites “determining at least one forward path preequalization parameter based on said at least one transmission delay.” Id.

at 16:61–62 (limitation [1.1], the determining step). Petitioner contends that 

Wong, alone or in combination with Minn, teaches or suggests the subject 

matter of these limitations. 

Petitioner contendsthat these two method steps “recite the wellknown ‘reciprocity’ concept.” Pet. 20. Petitioner continues that a base 

station “measures‘channel information’ about the ‘reverse’ channel[,] . . .

then uses this‘channel information’ to calculate one or more parameters to 

adjust transmissionsfrom the [base station] to the device on the ‘forward’

channel.” Id.; see also id. at 22 (“Element 1.1 recites . . . the well-known 

principle of using reverse channel information to calculate a parameter used 

to modify the signals transmitted on the forward path.” (referencing 

Ex. 1003 ¶ 290)). 

Petitioner contends that a person having ordinary skill in the art would 

have “understood that Wong teaches the concept of determining a forward 

path pre-equalization parameter based on multipath transmission delay for

several reasons.” Pet. 22 (referencing Ex. 1003 ¶¶ 290–298). First, 

Petitioner contends that Wong discloses that its system estimates 

instantaneous channel characteristics based on a received uplink 

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transmission. Id. (referencing Ex. 1005, 1748). Petitioner contends that 

multipath transmission delay was a well-known channel characteristic. Id.

Second, Petitioner contends that “Wong expressly identifies the 

problem of multipath interference as a ‘major problem’ that Wong and the 

‘369 [p]atent both address.” Pet. 22 (referencing Ex. 1003 ¶¶ 117, 291); see 

id. (“One of the main requirements on the modulation technique is the ability 

to combat intersymbol interference (ISI), a major problem in wideband

transmission over multipath fading channels.” (quoting Ex 1005, 1747) 

(emphasis added in Petition)). 

Third, Petitioner contends that a person having ordinary skill in the art 

would have “understood that using multipath transmission delays was one of 

a few known techniques to solve Wong’s‘major problem,’” based on 

Wong’s teachings. Pet. 23 (referencing Ex. 1003 ¶¶ 296–326). Petitioner 

contends that Wong teaches a base station that communicates with multiple 

users. Petitioner states that “Wong ‘denote[s] by the magnitude of the 

channel gain . . . of the nth subcarrier as seen by the kth user’ based on the

‘received uplink transmissions’ for a ‘time division duplex (TDD) wireless

communication system’ that uses ‘OFDM.’” Id. (alterations in original) 

(referencing Ex. 1005, 1747–1748; Ex. 1003 ¶¶ 306, 307, 313, 321, 371). 

Petitioner concludes that “within the known time-domain option, 

identifying and using the multipath transmission delay would have either 

been known or obviousto a” person having ordinary skill in the art. Pet. 24 

(referencing Ex. 1003 ¶¶ 145, 167–176, 188–190, 213–216, 307–312); see 

also id. at 24–26 (providing an explanation of measuring multipath 

transmission delay using channel impulse response for different timedomain indexes). Petitioner contends that a person having ordinary skill in 

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the art would have known that a subsequent step in processing the 

determined time delay for a time-domain approach is to estimate the channel 

frequency response for each subcarrier, such as by performing DFT (discrete 

Fourier transform) or FFT (fast Fourier transform) operations on the 

estimated channel impulse response. Id. at 26 (referencing Ex. 1003 

¶¶ 310–312). 

Petitioner contends that the channel frequency response “is exactly the 

information that Wong uses for adjusting the power levels of each tone.” 

Pet. 26. Petitioner adds that “Wong uses the term ‘magnitude of the channel 

gain’ to reflect the channel estimation.” Id. (referencing Ex. 1005, 1748; 

Ex. 1003 ¶¶ 311, 320–321); see id. (identifying αk,n as “the magnitude of the 

channel gain of the nth subcarrier as seen by the kth user” (emphasis 

omitted)); id. at 27 (contending that the channel frequency response is a 

function of the magnitude of the channel gain). Petitioner concludes that 

in the context of Wong, using the time-domain approaches to 

estimate the “channel frequency response” in the form of 

“HH [kk]” or “Ĥ [kk]” discloses the claimed . . . [determining step]

because it discloses the “channel gain” magnitude (the claimed 

“parameter”) that Wong uses to modify the forward path signals 

and it is “based on” the measured transmission delays (the 

“channel impulse response” discussed above).

Id. That is, Petitioner contends that the channel gain magnitude in Wong 

corresponds to the recited pre-equalization parameter. 

b) Petitioner’s Contentions: Limitation [1.2]

Claim 1 also recites “modifying a forward path data signal that is to 

be transmitted to the receiving device based on said at least one forward path 

pre-equalization parameter, where said modifying includes selectively 

setting different transmission power levels for at least two Orthogonal 

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Frequency Division Multiplexing (OFDM) tones in said forward path data 

signal.” Ex. 1001, 16:64–17:3(limitation [1.2], the modifying step). 

Petitioner contends that “using the channel characteristics, Wong’s 

[base station] will modify the forward link transmissions (to the mobile 

devices) by changing thepower levels for different OFDM tones (i.e., 

‘subcarriers’).” Pet. 35. Petitioner adds that “Wong’s ‘power allocation 

algorithm’ ‘assign[s] each user a set of subcarriers and by determining the 

number of bits and the transmit power level for each subcarrier.’” Id.

at 35–36 (alteration in original) (referencing Ex. 1005, 1747 (abstract)). 

Petitioner contends that Wong’s system “adaptively assign[s] subcarriers to 

the users along with the number of bits and power level to each subcarrier.” 

Id. at 36 (referencing Ex. 1005, 1757). Petitioner further contends that 

“Wong’s repeated reference to ‘adaptive’ or ‘adaptively’setting OFDM 

power levels teaches that such settings are ‘based on’ the reverse channel 

information (the information to which the power levels are being 

‘adapted’).” Id.

c) Patent Owner’s Counter Arguments

Patent Owner argues that “[t]he Petition provides no argument or 

evidence that channel gain magnitude would itself be considered a 

pre-equalization parameter. Nor does the Petition present any argument or 

evidence that channel gain magnitude is used to perform pre-equalization.” 

Prelim. Resp. 18. Patent Owner argues that, at best, Petitioner implies that 

some parameter is used in Wong’s system. Id. 

Patent Owner argues that to satisfy its burden, Petitioner must 

demonstrate that the channel gain magnitude is used to modify the forward 

path signal for pre-equalization. Prelim. Resp. 18. Patent Owner argues that 

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“Wong is directed to a power minimization algorithm and there is no

evidence it is directed to pre-equalization or that it performs 

pre-equalization.” Id. at 20. Patent Owner adds that “Wong’s total power 

minimization algorithm [does not] suggest that it is a pre-equalization 

algorithm [n]or show it is performing pre-equalization.” Id. 

Patent Owner acknowledges that Wong cites to references addressing 

equalization techniques in discussing intersymbol interference as 

background, but argues that Wong does not discuss those references further. 

Prelim. Resp. 21. Patent Owner argues that Wong is not concerned with 

pre-equalization or addressing that problem. Id.

Patent Owner argues that Dr. Negus’s declaration does not cure the 

deficiency in the Petition. Prelim. Resp. 22. Patent Owner argues that 

Petitioner’s citation to “broad swaths” of the declaration amounts to 

incorporation by reference. Id. Patent Owner also argues that Dr. Negus’s 

testimony is “unsupported and conclusory” and “vague and ambiguous.” Id.

d) Analysis

We have reviewed Patent Owner’s arguments and determine that they 

demonstrate a deficiency in Petitioner’s contentions sufficient to weigh 

against instituting trial.

We agree with Patent Owner that Petitioner fails to demonstrate, 

sufficient for institution, that Wong’s channel gain magnitude corresponds to 

the recited pre-equalization parameter. Petitioner first walks through an 

analysis as to how, employing a time-domain option, a channel input 

response based on multipath transmission delay can be determined, and how 

this channel input response would be converted to a channel frequency 

response. Pet. 23–26. Petitioner contends that uplink channel characteristics 

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can be determined by one of two ways—a time-domain option or a 

frequency domain option—“the epitome of ‘obvious to try.9’” Id. at 23. 

Petitioner then employs the time-domain approach, eventually getting to a 

relationship between channel gain and channel frequency response, 

apparently contending that the amplitude of the channel frequency is the 

same as the magnitude of the channel gain. See id. at 26–27; Ex. 1003 ¶ 311 

(“[T]hus the ‘magnitude of the channel gain’ as used in the methods 

described in Wong is simply this amplitude term within this estimated 

‘channel frequency response.’” (emphasis in original)). 

We are not persuaded that Petitioner has shown that Wong teachesthe 

recited pre-equalization parameter because Petitioner’s analysis does not 

address the term “pre-equalization” sufficiently. As Patent Owner argues, 

Wong discloses that it uses the magnitude of the channel gain in its iterative 

process of assigning bits to subcarriers in an OFDM system to minimize the 

total amount of power used for a transmission. The magnitude of the 

channel gain is used to calculate the required transmit power for a kth user 

over an nth subcarrier, as seen in Equation 1 in Wong. Ex. 1005, 1749. 

9 To the extent that Petitioner contends that employing the time-domain 

option would have been “obvious to try” under obviousness case law merely 

because there are only two options, this contention shortcuts the obvious to 

try analysis. See, e.g., Grunenthal GmbH v. Alkem Labs. Ltd., 919 F.3d 

1333, 1345 (Fed. Cir. 2019) (“To prove obviousness under an obvious to try 

theory, [the challenger] must show (1) a design or market need to solve a 

particular problem, and (2) that ‘there are a finite number of identified, 

predictable solutions’ that would lead to an expectation of success.” (quoting 

KSR Int’l Co., 550 U.S. at 421)).

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Wong’s process iterates over the k users and n subcarriers such that the sum 

of the transmit power is minimized. Id. Nowhere in Wong does it explain 

that its power minimization approach pre-equalizes the transmit signal. 

Accordingly, we agree with Patent Owner that Petitioner’s unpatentability 

analysis reads out the term “pre-equalization” from claim 1. See Prelim. 

Sur-reply 1–2. 

We find unpersuasive Petitioner’s argument that Wong addresses the 

same “major problem” as the ’369 patent. Pet. 22–23. Wong does state that 

the ability to combat intersymbol interference is a major problem in 

wideband transmission, but Wong goes on to state that “[m]ulticarrier 

modulation techniques, including orthogonal frequency division multiplex

(OFDM), (e.g., [4]) are among the more promising solutionsto this 

problem.” Ex. 1005, 1747. Wong explains that an OFDM system that 

employs adaptive modulation can have “significant performance 

improvement, but suffers from the problem of unused subcarriers.” Id. It is 

this problem of unused subcarriers in an OFDM system that employs 

adaptive modulation that Wong seeks to solve. Id. Specifically, Wong 

states that its “objective is to minimize the overall transmit power by 

allocating the subcarriers to the users and by determining the number of bits 

and the power level transmitted on each subcarrier based on the 

instantaneous fading characteristics of all users.” Id.

Dr. Negus defines a forward path pre-equalization parameter as a 

parameter used in forward path pre-equalization were a signal to be 

transmitted in a forward path is modified to account for the properties of the 

propagation paths between the transmitter at a base station and the receiver 

at a user. Ex. 1003 ¶¶ 284–285. We do not discern any testimony from 

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Dr. Negus or contentions from Petitioner as to how Wong’s channel gain 

magnitude is a parameter used in forward path pre-equalization. And, first 

and foremost, independent claim 1 requires the application of a 

pre-equalization parameter. 

It appears that the required power value determined in Wong for each 

user-subcarrier combination is determined, at least in part, on uplink 

information. See, e.g., Ex. 1005, 1747 (“This motivates us to consider an 

adaptive multiuser subcarrier allocation schemewhere the subcarriers are 

assigned to the users based on instantaneous channel information.”), 1748 

(“[T]he base station (BS) can estimate the instantaneous channel 

characteristics of all the BS-to-mobilelinks based on the received uplink 

transmissions.”). And this power value is used in Wong’s power 

minimization algorithm. See id. at 1749 (“The goal of the combined 

subcarrier, bit, and power allocation algorithm is then to find the best 

assignment of ck,n so that the overall transmit power, the sum of Pk,n over all 

subcarriers and all users, is minimized for given transmission rates of the 

users and given QoS requirements.”). But this teaching is not enough. 

Neither Petitioner nor Dr. Negus explains persuasively how Wong’s total 

power minimization process performs pre-equalization, so as to modify the 

transmission signal to account forthe properties of the propagation paths

between the base station and the receiver. 

e) Conclusion

For the reasons discussed above, we determine that the information 

presented in the Petition does not sufficiently demonstrate for institution that 

Wong alone, or in combination with Minn,renders claim 1 obvious under 

35 U.S.C. § 103(a). 

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2. Dependent claims 2–7, 9, 10, 12–15, and 41

Petitioner also contends that dependent claims 2–7, 9, 10, 12–15, and 

41, which depend ultimately from independent claim 1, are rendered obvious 

by Wong, or Wong and Minn. Pet. 37–47. We have reviewed Petitioner’s 

contentions directed to these dependent claims and do not discern anything 

that remedies the deficiency we identify in our analysis of claim 1. 

E. Ground 2: Claims 15, 19, 21, 28, 32, 33, and 35–37 as 

Obvious over Wong, or Wong and Minn, and Lehne

Petitioner contends that the combined teachings of either Wong, or 

Wong and Minn, and Lehne render obvious the subject matter of claims 15, 

19, 21, 28, 32, 33, and 35–37, all of which depend ultimately from 

independent claim 1. Pet. 48–69. We have reviewed Petitioner’s 

contentions directed to this ground and do not discern anything that remedies 

the deficiency we identify in our analysis of claim 1.

 

III. CONCLUSION

Based on the information presented,we determine Petitioner has not 

established a reasonable likelihood that it would prevail with respect to 

at least one of the Challenged Claims. Accordingly, we do not institute an 

inter partes review on all challenges.

IV. ORDER

In consideration of the foregoing, it is hereby:

ORDERED that an inter partes review is not instituted.

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For PETITIONER:

Patrick McPherson

Kevin Anderson

DUANNE MORRIS LLP 

PDMcPherson@duanemorris.com

KPAnderson@duanemorris.com

For PATENT OWNER:

Reza Mirzaie 

Philip Wang 

RUSS AUGUST & KABAT 

rmirzaie@raklaw.com 

pwang@raklaw.com

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