Exhibit 9

Case 2:23-cv-00202-JRG-RSP Document 81-10 Filed 07/15/24 Page 1 of 9 PageID #: 1933
 

 

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE 

_____________________ 

BEFORE THE PATENT TRIAL AND APPEAL BOARD 

_____________________ 

ERICSSON INC. 

NOKIA OF AMERICA CORPORATION 

Petitioners, 

v. 

XR COMMUNICATIONS LLC 

Patent Owner. 

____________ 

U.S. PATENT NO. 7,177,369

Title: MULTIPATH COMMUNICATION METHODS AND APPARATUSES 

_____________________ 

Inter Partes Review No.: IPR2024-00314 

_____________________ 

PETITIONERS’ RESPONSE TO 

PATENT OWNER’S PRELIMINARY RESPONSE 

Mail Stop “PATENT BOARD”

Patent Trial and Appeal Board 

U.S. Patent and Trademark Office 

P.O. Box 1450 

Alexandria, VA 22313-1450 

Case 2:23-cv-00202-JRG-RSP Document 81-10 Filed 07/15/24 Page 2 of 9 PageID #: 1934
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Petitioners herein “address the [im]propriety of Patent Owner’s claim 

construction of the term ‘pre-equalization parameter.’” Paper #8 at 3. Patent 

Owner’s Preliminary Response (POPR) redefines “pre-equalization” in “preequalization parameter” to be “modifying a signal to reduce unwanted effects 

associated with multipath fading between the transmitter and the receiver.” POPR 

at 8, 14, 15, 21, 22. This is referenced herein as Patent Owner’s (“PO”) “intended 

purpose.” No basis exists in law or the intrinsic record to incorporate this intended 

purpose from the specification into Claim 1. 

Claim 1 already recites how the “pre-equalization parameter” is used. 

A method comprising: 

identifying at least one multipath transmission delay within a reverse 

path data signal received from a receiving device; 

determining at least one forward path pre-equalization parameter based 

on said at least one transmission delay; and 

modifying a forward path data signal that is to be transmitted to the 

receiving device based on said at least one forward path preequalization 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, Claim 1. The claim already recites that “pre-equalization” performs a 

very specific action (modifying the power levels for two OFDM tones before 

transmission). Thus, the claim language recites the complete usage chosen by the 

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patentee to define the claim. Moreover, when the patentee wanted PO’s intended 

purpose of reduced multipath to be included in a claim, the patentee expressly 

included that language. EX-1001, claims 30 (“to reduce multipath propagation”); 

37 (“to reduce multipath affects”); 65, 74, 88. 

Under PO’s construction, prior art, or an accused product, could exactly 

recite every word of Claim 1 and perform every claimed step in verbatim language, 

but would fall outside of Claim 1 unless it recited PO’s intended purpose. PO’s 

intended purpose improperly reads an “intent” element into the claims. Under 

PO’s construction, it is not enough to perform the steps of the method, but those 

steps must have the intent to perform PO’s intended purpose. Such an “intent” 

claim construction is improper. Sorrell Holdings, LLC v. Infinity Headwear & 

Apparel, LLC, 2024 U.S. App. LEXIS 2487, at *6 (Fed. Cir. Feb. 5, 2024) (district 

court’s construction “erroneously required ...a design intent requirement”). 

The specification does not support PO’s intended purpose. The claimed

embodiment (modifying OFDM power levels) is taught in a single passage. EX1001, 15:31-63 (modifying OFDM power levels for different tones). Notably, this 

embodiment does not specify PO’s intended purpose. A second embodiment at 

14:30-15:29 discusses “parameters” used to “modif[y] each tone” using “channel 

characteristics” (without teaching that the modification is OFDM tone power levels 

as claimed). Again, this embodiment also does not specify PO’s intended purpose. 

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Conspicuously, the POPR does not cite to either embodiment most relevant 

to claim 1 (15:31-63, 14:30-15:29) to support PO’s intended purpose. Instead, PO 

cites to five columns of materials in the ‘369 specification. POPR at 14-16 (citing 

to 3:8-7:4; 7:63-8:3; 10:31–37; and 7:14-21). Notably, PO’s cited portions do not 

identify passages related to the claimed usage of pre-equalization (modifying 

OFDM tone power levels). Columns 3-7 (cited by PO) discusses known 

techniques – not anything alleged to be invented in the ‘369 patent. 

PO’s remaining passages do not compel reading PO’s intended purpose into 

the meaning of “pre-equalization.” PO relies on one excerpt that recites 

“substantially reduces unwanted effects”: 

With these and/or other design considerations in mind, in accordance with 

certain aspects of the present invention equalization techniques are 

provided for use at a transmitting node and configured to perform preequalization that substantially reduces unwanted effects associated with 

multipath fading, including retro-reflected propagation delays. Such preequalization techniques are discussed in greater detail in later sections. 

EX-1001, 7:14-21. 

Beyond the lack of support, PO’s intended usage construction: (1) renders 

the claim indefinite; and/or (2) necessitates further constructions to construe the 

construction. For example, on PO’s “reduces” limitation, PO (without basis) omits 

“substantially” – likely because it would render the construction indefinite. 

Invitrogen Corp. v. Clontech Labs., Inc., 429 F.3d 1052, 1074 (Fed. Cir. 2005) 

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(178 claims reciting “substantially reduced” indefinite while four claims further 

defining the “reduce” limitation to “no detectable” held not invalid). Thus, PO’s 

construction would require a further interpretation of “substantially reduces” that 

provides an objective basis for evaluating this term. 

Similarly, PO’s term “unwanted” implies that some “effects” of multipath 

may be “wanted.” This requires a further construction of how to distinguish 

between unwanted and wanted effects. PO’s term “effects” also requires further 

construction. What is an “effect” in this context. The ‘369 patent does describe 

some multipath effects such as being “difficult . to ... determine information 

content.” EX-1001, 3:17-21. If “effect” is part of the claim (through PO’s 

intended purpose), then it must be construed in the context of the ‘369 patent. 

Also, associated with multipath fading requires construction. PO does not 

propose a standard for a POSA to use to determine if some (unknown) “effect” is 

“associated with multipath fading.” PO’s construction would need to encompass 

the ‘369 definition that “multipath fading will often cause the channel transfer 

function to have frequency-dependent responses that alter the amplitude and phase 

modulation content of a received signal... that exist across the modulation 

bandwidth of a signal” EX-1001, 3:24-32. 

Moreover, PO’s cited passage states “[s]uch pre-equalization techniques are 

discussed in greater detail in later sections.” EX-1001, 7:19-21. One of those 

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techniques “in later sections” is the OFDM tone power modification technique 

expressly recited in Claim 1. EX-1001, 15:31-64. Thus, PO’s construction is 

superfluous because meeting the actual claimed requirement (OFDM tone power 

modification) meets PO’s intended purpose definition. 

The prosecution history does not support PO’s intended passage nor did PO 

cite any prosecution history excerpts with its intended purpose construction. 

PO stated that it does not assert lexicography. But PO seeks to do exactly 

that – without meeting lexicography’s stringent bar. “The bar for lexicography is 

exacting... Lexicography applies only where the patentee ‘clearly set[s] forth a 

definition of the disputed claim term’ and ‘clearly express[es] an intent’ to redefine 

the term.” Guardant Health, Inc. v. Vidal, 2023 U.S. App. LEXIS 11037, at *5 

(Fed. Cir. May 5, 2023) (citations omitted). PO plucks one (partial) passage out of 

the specification to incorporate into the meaning of “pre-equalization” under the 

guise of “plain and ordinary meaning.” If this approach is permissible, then there 

is no need for any party to ever meet the “exacting” bar of lexicography. A party 

could always incorporate limitations from the specification and couch its 

arguments (as PO does) as “plain and ordinary meaning.” Eliminating the concept 

of lexicography is not a proper approach to claim construction. 

Petitioners requests the Board reject PO’s impropoer intended purpose 

construction, institute inter partes review, and cancel all Challenged Claims. 

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Respectfully submitted, 

DUANE MORRIS LLP 

BY: /Patrick D. McPherson/ 

Patrick D. McPherson 

USPTO Reg. No. 46,255 

Duane Morris LLP 

901 New York Ave NW, Suite 700 

East 

Washington, D.C. 20001 

Dated: May 8, 2024 

Case 2:23-cv-00202-JRG-RSP Document 81-10 Filed 07/15/24 Page 8 of 9 PageID #: 1940
Petition for Inter Partes Review of U. S. Patent No. 7,177,369 

CERTIFICATION OF SERVICE ON PATENT OWNER 

Pursuant to 37 C.F.R. §§ 42.6(e), 42.8(b)(4) and 42.105, the undersigned 

certifies that on the 8th of May, 2024, a complete and entire copy of this Reply 

were served via email to counsel of record that has entered an appearance in this 

proceeding: 

/Patrick D. McPherson/ 

Patrick D. McPherson, Reg. No. 46,255 

901 New York Ave., N.W., Suite 700 East 

Washington, D.C. 20001 

P: (202) 776-7800 

F: (202) 776-7801 

PDMcPherson@duanemorris.com 

ATTORNEY FOR PETITIONERS 

Case 2:23-cv-00202-JRG-RSP Document 81-10 Filed 07/15/24 Page 9 of 9 PageID #: 1941