22-01-19 Apple IPR Petition Against US10193600

UNITED STATES PATENT AND TRADEMARK OFFICE
_________________
BEFORE THE PATENT TRIAL AND APPEAL BOARD

_________________
APPLE INC.,
Petitioner
v.
TELEFONAKTIEBOLAGET LM ERICSSON,
Patent Owner
_________________
Inter Partes Review Case No. IPR2022-00464

U.S. Patent No. 10,193,600
PETITION FOR INTER PARTES REVIEW

OF U.S. PATENT NO. 10,193,600
IPR2022-00464
U.S. Patent No. 10,193,600
TABLE OF CONTENTS
I. INTRODUCTION ......................................................................................... 1
II. CERTIFICATION OF GROUNDS FOR STANDING .................................. 1
III. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED..................... 2
A. Prior Art ..................................................................................................... 2
B. Relief Requested ........................................................................................ 2
IV. OVERVIEW OF THE TECHNOLOGY ........................................................ 3
V. THE ’600 PATENT ......................................................................................11
A. Claims .......................................................................................................12
B. Summary of the Specification ...................................................................12
C. Summary of the Prosecution History .........................................................15
D. Person of Ordinary Skill in the Art ............................................................15
VI. CLAIM CONSTRUCTION ..........................................................................16
VII. OVERVIEW OF THE PRIOR ART .............................................................16
A. Novlan ......................................................................................................16
B. 36.213 .......................................................................................................19
VIII. SPECIFIC GROUNDS FOR PETITION ......................................................21
A. Novlan, Or Alternatively Novlan In View Of 36.213, Renders Obvious All
Challenged Claims ............................................................................................21
1. Independent Claim 1 .............................................................................21
2. Dependent Claim 2 ................................................................................33
3. Dependent Claim 3 ................................................................................34
4. Dependent Claim 4 ................................................................................35
5. Dependent Claim 5 ................................................................................38
6. Dependent Claim 6 ................................................................................39
7. Dependent Claim 7 ................................................................................43
8. Independent Claim 8 .............................................................................45
9. Dependent Claim 9 ................................................................................48
10. Dependent Claim 10 ..............................................................................49
11. Dependent Claim 11 ..............................................................................49
12. Dependent Claim 12 ..............................................................................49
13. Dependent Claim 13 ..............................................................................50
14. Dependent Claim 14 ..............................................................................50
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15. Independent Claim 15 ...........................................................................51
16. Dependent Claim 16 ..............................................................................53
17. Dependent Claim 17 ..............................................................................53
18. Dependent Claim 18 ..............................................................................54
19. Dependent Claim 19 ..............................................................................54
20. Dependent Claim 20 ..............................................................................54
21. Dependent Claim 21 ..............................................................................55
22. Independent Claim 22 ...........................................................................55
23. Dependent Claim 23 ..............................................................................58
24. Dependent Claim 24 ..............................................................................58
25. Dependent Claim 25 ..............................................................................59
26. Dependent Claim 26 ..............................................................................59
27. Dependent Claim 27 ..............................................................................59
28. Dependent Claim 28 ..............................................................................60
IX. SECONDARY CONSIDERATIONS ...........................................................60
X. PTAB DISCRETION SHOULD NOT PRECLUDE INSTITUTION ............61
A. The Advanced Bionics Test Favors Institution—§ 325(d) .........................61
B. The General Plastic Factors Favor Institution ............................................63
XI. CONCLUSION .............................................................................................63
XII. MANDATORY NOTICES ...........................................................................65
A. Real Party-In Interest ................................................................................65
B. Related Matters .........................................................................................65
C. Counsel and Service Information ..............................................................65
D. 37 C.F.R. § 42.8(b)(4): Service Information ..............................................66
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LIST OF EXHIBITS
Exhibit Description
No.
1001 U.S. Patent No. 10,193,600 (“the ’600 Patent”)
1002 Certified File History of U.S. Patent No. 10,193,600
1003 Declaration of Dr. Apostolos K. Kakaes for Inter Partes Review of
U.S. Patent No. 10,193,600
1004 Curriculum Vitae of Dr. Apostolos K. Kakaes
1005 U.S. Patent Application Publication No. 2014/0016549 (“Novlan”)
1006 3GPP TS 36.213, v12.3.0 (“36.213”)
1007 3GPP TS 36.213, v10.1.0
1008 U.S. Patent No. 8,891,676
1009 Declaration of Friedhelm Rodermund in Support of Petition for Inter
Partes Review of U.S. Patent No. 10,193,600
1010 U.S. Provisional Patent Application No. 62/103,101 (“the ’600
Patent Provisional”)
1011 U.S. Patent Application Publication No. 2013/0163687 (“Jing”)
1012 U.S. Provisional Patent Application No. 61/670,936 (the “Novlan
Provisional”)
1013 Dahlman et al., 4G – LTE / LTE-Advanced for Mobile Broadband
(Academic Press 2011) (“Dahlman”)
1014 Declaration of James L. Mullins in Support of Petition for Inter
1015 U.S. Patent Application Publication No. 2008/0051091
1016 Sesia, et al., LTE - The UMTS Long Term Evolution From Theory
to Practice (Wiley 2d. ed. 2011) (“Sesia”)
1017 Declaration of Jacob Robert Munford in Support of Petition for Inter
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Petitioner Apple Inc. (“Apple” or “Petitioner”) requests inter partes review
(“IPR”) of claims 1–28 (the “Challenged Claims”) of U.S. Patent No. 10,193,600
(Ex. 1001, “the ’600 Patent”).
I. INTRODUCTION
The ’600 Patent is directed towards methods and apparatuses for “codebook
subset restriction,” a well-known prior art technique used to assist in forming and
directing antenna beams transmitted from a base station to a user device in a wireless
communication network. See Ex. 1001 at 1:13–18. The purported novelty of the
’600 Patent is applying the conventional codebook subset restriction technique in a
manner that is “rank-agnostic” (See Ex. 1002 at 344), meaning that the technique is
applied without regard to the number of beams of information the base station targets
at the user device. This Petition demonstrates, however, that applying the admittedly
conventional technique of codebook subset restriction in a manner that is rank-
agnostic was obvious at the time of the alleged invention. Petitioner therefore
respectfully requests that the Challenged Claims be cancelled as invalid.
II. CERTIFICATION OF GROUNDS FOR STANDING
Petitioner certifies pursuant to Rule 42.104(a) that the ’600 Patent is available
for IPR and that Petitioner is not barred or estopped from requesting an IPR of the
Challenged Claims on the grounds identified in this Petition.
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III. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED
Petitioner challenges the patentability of the Challenged Claims of the ’600
Patent and requests that they be canceled.
A. Prior Art
Petitioner’s challenge is based on the following prior art references:
• Novlan (Ex.1005) - U.S. Patent Application Publication No. 2014/0016549
to Novlan et al. filed July 11, 2013. Novlan published on January 16, 2014
and is prior art under post-AIA 35 U.S.C. §§ 102(a)(1)–(2).
• 36.213 (Ex. 1006) - “Evolved Universal Terrestrial Radio Access (E-UTRA);
Physical Layer Procedures,” 3GPP TS 36.213, Version 12.3.0 (Release 12).
As set forth in the Rodermund Declaration (Ex. 1009, ¶58), 36.213 was
published and publicly available no later than September 26, 2014, and is prior
art under post-AIA 35 U.S.C. § 102(a)(1).
B. Relief Requested
Petitioner requests cancellation of the Challenged Claims as unpatentable
under post-AIA 35 U.S.C. § 103. The specific grounds of the challenge are set forth
below, and are supported by the declaration of Dr. Apostolos K. Kakaes (Ex. 1003).
Ground Basis Challenged Claims References
1 103 1-28 Novlan, or

alternatively Novlan in
view of 36.213
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IV. OVERVIEW OF THE TECHNOLOGY
The ’600 Patent is directed to methods and apparatuses used in the context of
the 4G LTE wireless standard, which enables devices from different companies to
communicate with each other. See Ex. 1001 at 1:42–44; Ex. 1003 ¶34.
In a 4G LTE wireless communication network, a base station (which may be
referred to as an “eNodeB” or “eNB”) and a mobile user device (e.g., a cell phone,
also called “User Equipment” or “UE”) communicate via signals transmitted
wirelessly over the air. Ex. 1003 ¶34. A base station typically comprises multiple
antennas to increase the amount of data that can be transmitted at any given time.
See, e.g., Ex. 1001 at 1:22–25; Ex. 1003 ¶35. For example, as pictured below, a
typical base station (represented by the tower on the right) has multiple antenna
arrays, where each array has a series of individual antennas (elements 402) arranged
horizontally and vertically, as shown in the magnified view on the left side of the
diagram:
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See Ex. 1005 at Fig. 4; Ex. 1003 ¶36.
The 4G LTE standard provides a technique known in the art as “precoding,”
which leverages these multiple antennas to improve the signal strength between the
base station and the UE. Signal strength is affected by angle, distance, scattering
obstacles, and other factors that can reduce the strength of the signal received at the
UE. Precoding can be used, for example, to provide beam “diversity,” which
decreases the likelihood of fading when the signal strength is intermittently weak.
See Ex. 1003 ¶41. Precoding can also be used to steer the antenna beams in a
particular desired direction, as the signal strength between the base station and any
particular UE may be strongest when the base station’s antenna beams are targeted
at the UE in a particular direction. See, e.g., Ex. 1001 at 1:25–26.
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For example, as illustrated below, when a UE is at a high elevation on the
third floor of a building, the signal may be strongest when the base station directs its
antenna signals upwards (green arrow); by contrast, when the UE is at a low
elevation on ground level, the signal may be strongest when the base station directs
its antenna signal downwards (blue arrow):
See Ex. 1005 at Fig. 7; Ex. 1003 ¶38. A base station will generally not direct an
antenna beam higher than the tallest building in a city (for example) since UEs are
not typically found there. Ex. 1003 ¶39. This situation is depicted by the red arrow
in the following diagram:
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See Ex. 1005 ¶50 (some directions “are infrequently selected or never selected”);
Ex. 1003 ¶39.
In 4G LTE, a base station is not limited to a single antenna beam aimed at a
UE. Rather, to increase the information sent to the UE, the base station can send an
additional beam at a different angle that could, based on topography, reflect off a
surface or diffract, and also reach the same UE, as illustrated below, where a second
beam bounces off the ground and reaches the same UE on the third floor of the
building (dashed green arrow):
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This ability to adjust the transmission in order to send multiple antenna beams at
different angles to the same UE (when the physical conditions allow) is known in
the prior art as “rank adaptation.” See, e.g., Ex. 1001 at 1:31–35. In the diagram
above, the direct beam (solid green arrow) represents a “rank 1” transmission, and
the indirect beam (dashed green arrow) represents a “rank 2” transmission. See Ex.
1003 ¶40. Of course, even in this situation where the base station beams information
to a UE in multiple different ways at the same time (e.g., via the rank-1 solid green
arrow and the rank-2 dashed green arrow), the common sense notion discussed
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above—that the base station would generally not direct any beams higher than the
tallest building in the city—still applies. See id.
The “precoding” technique referenced above that forms an antenna’s beams
in a particular desired direction (“beamforming”) involves a particular operation.
See, e.g., Ex. 1001 at 1:35–38. Specifically, the signals are multiplied by a “precoder
matrix,” also referred to as a “precoder,” the result of which is that the beam is
formed in the desired manner. See, e.g., id., at 1:38–40. For example, a precoder
(represented by variable W(1)) can be represented by the following matrix:
See Ex. 1005 ¶78 (Table 7.2.4-1). The component 𝑣𝑚, referred to in the art as a
“beam precoder” or “spatial signature” or “steering vector,” can take the form:
See id. ¶77. In another example, a precoder can be represented by:
See id., ¶84. The precoder and its component 𝑣𝑚 (when the precoder is expressed
using that component) is a function of the angle (associated with 𝜃𝐶 in the
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formulation immediately above1) at which the antenna beam is directed, by
convention measured relative to the horizontal. See id., ¶84; Ex. 1003 ¶47. By
multiplying the unformed antenna signal by this precoder matrix, the antenna beam
is targeted in the direction associated with 𝑣𝑚. The precoders shown above, which
have only one column, are “rank-1” precoders because they are used to aim one
antenna beam. A “rank-2” precoder matrix has two columns and is used to aim two
antenna beams, and so on. See Ex. 1006 at 97; Ex. 1003 ¶48.
In practice, the UE tells the base station which precoder matrix to use to form
the base station’s antenna beams in a way that optimizes the signal strength for
transmission to the UE. See, e.g., Ex. 1001 at 1:46–48. The UE makes such a
determination by assessing the channel quality associated with different beams
transmitted by the base station in different directions at first, and then notifying the
base station which precoder matrix is associated with the particular beam or beams
received most strongly. See, e.g., Ex. 1005 ¶57; Ex. 1003 ¶41.
1
Note that 𝜃𝐶 in the context of the formula for this precoder from Novlan refers to a
specific angle, while “𝜃𝐶” in the context of Novlan’s Figure 7 is used coincidentally
to refer to “the elevation angle range experienced by all the UEs.” See Ex. 1005 ¶54;
Ex. 1003 ¶47.
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In 4G LTE, the set of possible precoder matrices for the UE to choose from
are collected into a group known as a “codebook” that can be stored on the UE. See,
e.g., Ex. 1001 at 1:40–42. Precoders of various different ranks can be grouped within
different codebooks or, equivalently, in one larger codebook. See, e.g., Ex. 1001 at
10:13–19; Ex. 1003 ¶42. The number of precoder matrices to potentially choose
from can be quite large, however. See, e.g., Ex. 1001 at 2:47–49. This large number
of choices could make it cumbersome for the UE to figure out which one is best. Ex.
1003 ¶43.
To help the UE with this task, 4G LTE provides a technique known as
“codebook subset restriction.” Ex. 1003 ¶44. In codebook subset restriction, the
base station can prohibit certain precoder matrices from being selected by the UE,
such that the UE only needs to find the best precoder matrix from a smaller group.
See, e.g., Ex. 1001 at 2:21–24. The base station conveys this prohibition by way of
a signal message sent to the UE. See id. at 2:29–30. Because the UE only needs to
consider a subset of the codebook as indicated by the base station’s signal, the UE’s
task is much simpler. See, e.g., id. at 2:24–28.
However, indicating on an individualized basis each precoder matrix that is
restricted from being selected can also be cumbersome, because the base station
would need to send an indication of whether a precoder matrix is restricted or
unrestricted for every precoder matrix in the codebook. See id. at 2:49–51
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(“Signaling a codebook subset restriction in the conventional way by means of a
bitmap with one bit for every precoder can thus impose a large overhead….”). As
was known in the art, it is better if the base station did not need to individually restrict
precoder matrices, and instead collectively restricts groups of precoder matrices at
once. See Ex. 1003 ¶45; Ex. 1011 at, e.g., Fig. 1.
The prior-art technique of joint codebook subset restriction achieves this
benefit. Ex. 1003 ¶46. Instead of the base station restricting precoder matrices
individually, the base station restricts precoders on a group basis. See, e.g., Ex. 1011
at Fig. 1 (prior art teaching joint codebook subset restriction: “Identify the state of
each group as restricted or unrestricted by one bit after grouping”)2. For example,
a group can be comprised of precoders that are all associated with very high
elevation angles where the base station does not expect any UEs to be found, and
instead of restricting each such precoder individually (for example, using a single
bit 0 or 1 for each precoder to indicate whether it is allowed or not), the entire group
could be restricted by reference to their membership in the restricted group. Ex.
1003 ¶46.
V. THE ’600 PATENT
The ’600 Patent issued on January 29, 2019, from U.S. Application No.
15/105,648 filed on January 11, 2016. The ’600 Patent claims priority to a
2
All emphasis is added unless indicated otherwise.
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provisional application (No. 62/103,101) (Ex. 1010) filed on January 14, 2015. The
’600 Patent is directed to wireless communication systems and, in particular,
methods and systems for codebook subset restriction. See Ex. 1001 at 1:13–18.
A. Claims
The ’600 Patent has 28 claims, including four independent claims numbered
1, 8, 15, and 22.
B. Summary of the Specification
The ’600 Patent purports to improve upon the LTE standard that establishes
protocols for interoperability for 4G wireless communications. See Ex. 1001 at
2:29–54 (discussing the purported problems associated with LTE Technical
Specification 36.331). The ’600 Patent begins by recognizing that codebook-based
precoding was well-known in the art. See id. at 1:42–44 (“Such codebook-based
precoding is an integral part of the LTE standard, as well as in many other wireless
communications standards.”). The ’600 Patent further recognizes that codebook
subset restriction signaling was well-known in the art. See id. at 2:49–50 (“Signaling
a codebook subset restriction in the conventional way….”). And, as the Examiner
found during prosecution, joint codebook subset restriction was also well-known in
the art. See Ex. 1002 at 312–13 (Examiner finding that that the prior art taught joint
codebook subset restriction signaling).
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The ’600 Patent discusses one well-known method of codebook subset
restriction signaling: “[r]estriction of precoders with certain angular pointing
directions.” Ex. 1001 at 18:14–15.; See also Ex. 1003 ¶49. As illustrated in the
figure below, in the ’600 Patent, “codebook subset restriction is applied to restrict
beams with pointing directions in the zenith interval [80º, 100º].” Id. at 18:22–24.
These restricted precoders are found within the band of forbidden zenith elevation
angles (80º, 100º) in, for example, Figure 7:
Id. at Fig. 7.
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The purported point of novelty of the ’600 Patent is merely that the joint
codebook subset restriction is “rank agnostic,” meaning that the joint restriction
applies to precoder matrices without regard to the precoders’ transmission rank. See
Ex. 1002 at 344, 351; Ex. 1003 ¶50. For example, take the following rank-1 precoder
matrix and rank-L precoder matrix (which has L number of columns), both of which
have the component b0 in the first row and first column:
See Ex. 1001 at 14:25–30, 18:3–8. In this example, if element b0 is restricted, such
restriction can apply to both of these precoder matrices because they both have the
component b0, where such restriction is not based on the fact that the precoders are
rank-1 and rank-2. See id. at 17:9–19:
In some embodiments, signaling that jointly restricts a

group of precoders by restricting a certain component []
that those precoders have in common is rank-agnostic.
That is, the signaling jointly restricts the group of
precoders regardless of the precoders’ transmission
rank (i.e., regardless of which rank-specific codebook
they belong to). For example, embodiments that restrict
a single beam precoder b0 can be extended so that all
precoders across all ranks that contain the restricted
beam precoder b0 are restricted.
See also Ex. 1003 ¶50. As discussed below, rank-agnostic precoder restriction was
already known in the prior art.
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C. Summary of the Prosecution History
The application that matured into the ’600 Patent was filed on June 17, 2016,
and claims priority to PCT/SE2016/05009 filed on January 11, 2016 and to U.S.
provisional application no. 62/103,101 filed on January 14, 2015. See Ex. 1001 at
Title Page. In the first Office Action, 20 of the pending claims were rejected as
anticipated or obvious based on the prior art, and the remainder of the claims were
objected to as depending on rejected base claims. See id.; Ex. 1002 at 310–15. In
response, the applicant then amended the independent claims to add the limitation
“wherein the codebook subset restriction signaling is rank-agnostic signaling that
jointly restricts the precoders in a group without regard to the precoders’
transmission rank.” See id. at 343–51. Those amended claims were then allowed
without substantive explanation. See id. at 354–59.
D. Person of Ordinary Skill in the Art
As explained by Dr. Kakaes, a POSITA at the time of the ’600 Patent would
have had a Master’s degree in Electrical Engineering, Applied Mathematics,
Computer Science, Physics, or equivalent and three to five years of industry
experience in wireless digital communication systems. Additional education might
compensate for less experience, and vice-versa. See Ex. 1003 ¶57.
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VI. CLAIM CONSTRUCTION
Claim terms “shall be construed 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); Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en
banc). Petitioner submits that the Board does not need to construe any claim term
for purposes of resolving the issues presented by this Petition.
VII. OVERVIEW OF THE PRIOR ART
A. Novlan
Just like the ’600 Patent, Novlan is directed to methods and systems for
codebook subset restriction. See Ex. 1005 ¶2. Novlan considers the situation where
a base station is serving multiple UEs at different locations, as shown, for example,
in the following portion of Figure 6 of Novlan:
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See id. at Fig. 6 (annotated).
Novlan recognizes that serving many UEs provides motivation for techniques
that enable the efficient selection of the best precoder matrix to form and target
beams for each of the UEs served by the base station. See id. ¶51 (“The introduction
of multi-user (MU) MIMO transmission supporting large numbers of users due to
transmission points equipped with two-dimensional (2D) antenna arrays with large
numbers of elements further motivates the need for efficient PMI [precoder matrix
indicator] selection….”).
Novlan also recognizes that the UEs served by a base station may be at
different elevations, as shown, for example, in Figure 7:
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See also id. ¶52 (“Due to the variation in network user geographic distributions,
users may experience different angles of elevation … relative to the transmission
point.”). Novlan teaches that narrowing the codebook to only those precoder
matrices representing a realistic vertical range based on the spatial domain in which
a UE is operating—and excluding those precoder matrices corresponding to beams
aimed at extreme elevation angles, or elevation angles otherwise not suitable for a
particular spatial domain—can helpfully narrow the number of precoder matrices
that need to be reviewed for optimal fit:
Thus, one method for improving the efficiency of

vertical PMI selection and reducing [] computation
complexity is to restrict the UE to searching through the
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codebook only over those precoders that correspond to
[the] relevant spatial domain.
Id. ¶54. Notably, Novlan teaches that its restriction technique is rank-agnostic,
because all precoders that do not correspond to the relevant elevation angle will be
restricted without regard to rank—the only factor that matters is elevation angle. See
id.; Ex. 1003 ¶62.
As further discussed in Section X.A below, Novlan was cited by the Examiner
during prosecution of the ’600 Patent, but only as a secondary reference in the
context of certain dependent claims. See Ex. 1002 at 310–15.
Because Novlan and the ’600 Patent are both directed to codebook subset
restriction, Novlan is in the same field of endeavor as and is pertinent to a problem
to be solved by the ’600 Patent. Ex. 1003 ¶59. Therefore, Novlan is analogous art.
B. 36.213
36.213 is one Technical Specification within a broader suite of standards that
collectively enable 4G LTE wireless communications. See Ex. 1003 ¶63. 36.213
“specifies and establishes the characteristics of the physical[] layer procedures,”
meaning it relates to the physical process associated with (among other things)
antenna beamforming, as opposed to logical or abstract processes associated with
higher-level applications. See Ex. 1006 at 7; Ex. 1003 ¶65.
The 36.213 standard teaches the organization of the codebook for different
precoder matrices, including rank-1 precoder matrices as shown in Table 7.2.4-1:
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and rank-2 precoder matrices as shown in Table 7.2.4-2:
See Ex. 1006 at 97; Ex. 1003 ¶66. 36.213 also teaches higher-rank precoder
matrices. See Ex. 1006 at 98–99. Notably, 36.213’s rank-1 codebook is identical to
that taught by Novlan. See Ex. 1005 ¶78 (identical Table 7.2.4-1). Moreover,
36.213’s definition of rank-2 precoders contains the same (scaled) first column as
the first column in Novlan’s rank-1 precoders.
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Because 36.213 and the ’600 Patent are both directed to codebook subset
restriction, 36.213 is in the same field of endeavor as and is pertinent to a problem
to be solved by the ’600 Patent. Ex. 1003 ¶64. Therefore, 36.213 is analogous art.
VIII. SPECIFIC GROUNDS FOR PETITION
A. Novlan, Or Alternatively Novlan In View Of 36.213, Renders

Obvious All Challenged Claims
As discussed below, Novlan alone, or alternatively in view of 36.213, renders
all Challenged Claims obvious. Novlan and 36.213 are analogous prior art
references and it would be obvious to read Novlan in view of 36.213. See Ex. 1003
¶68. Moreover, a POSITA would be motivated to combine Novlan with 36.213 for
a number of reasons, as discussed in detail below in connection with specific claim
limitations and the specific portions of 36.213 combined to the extent the Board
believes that Novlan alone does not disclose or render obvious each element below.
See id.
1. Independent Claim 1
a. Preamble: “A method implemented by a network node for signaling to a

wireless communication device which precoders in a codebook are restricted
from being used, the method characterized by…”
To the extent the preamble of claim 1 is limiting, Novlan discloses it or
renders it obvious. See Ex. 1003 ¶¶69–72. First, Novlan teaches a method
implemented by an eNodeB. See Ex. 1005 ¶4 (“The method includes receiving
from an eNodeB (eNB) an indication of a restricted subset M of vertical precoding
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matrices.”). The ’600 Patent states, and a POSITA would recognize, that an eNodeB
is a network node. See Ex. 1001 at 6:20–22 (“a network node 10 in a wireless
communication network (e.g., an eNB in the network)”); Ex. 1003 ¶69.
Second, Novlan teaches that its eNB signals to a UE. See Ex. 1005 ¶101
(“Codebook subset restriction can be signaled to a UE by using a bitmap in a UE-
specific manner”). The ’600 Patent states, and a POSITA would recognize, that a
UE is a wireless communication device. See Ex. 1001 at 6:23–24 (“a wireless
communication device 14 (e.g., a UE).”); Ex. 1003 ¶70. Therefore, Novlan teaches
a network node (eNB) for signaling to a wireless communication device (UE).
Third, Novlan teaches a codebook comprised of precoders. See Ex. 1005 at,
e.g., Abstract (“the codebook comprising a plurality of vertical precoding matrices
and horizontal precoding matrices”), ¶50 (“The number of bits in the codebook
subset restriction bitmap is determined by the number of precoders allowed….”);
Ex. 1003 ¶71. As a POSITA would recognize, and as the ’600 patent confirms,
“precoders” is used as shorthand in the art for a precoding matrix. See, e.g., Ex.
1005 ¶41 (“[T]he network utilizes channel state information … to select precoders
…. [E]ach UE can be configured to feed back estimated precoding matrix
indicators….”); Ex. 1001 at 14:32–38 (“Here, W is a NxL precoder matrix….
Another precoder W of the same codebook as W above can be expressed as….”);
Ex. 1003 ¶71.
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Fourth, and as discussed in further detail below, Novlan teaches that its eNB
signals to a UE which precoders in a codebook are restricted from being used. See
Ex. 1005, e.g., ¶¶4 (“A method … for use in a user equipment (UE)…. The method
includes receiving from an eNodeB (eNB) an indication of a restricted subset M
of vertical precoding matrices”), 64 (“[T]he eNB … indicate[s] to the UE the
desired M=4 precoding matrices out of the total N=16.”), 102 (“Codebook subset
restriction can be signaled to a UE by using a bitmap in a UE-specific manner. A
bit value of zero in the bitmap indicates that the PMI reporting is not allowed to
correspond to the precoder associated with the bit.”), cl. 1 (“For use in a user
equipment (UE) in a wireless network having two-dimensional antenna systems, a
method of codebook sampling, the method comprising: receiving from an eNodeB
(eNB) an indication of a restricted subset M of vertical precoding matrices….”);
Ex. 1003 ¶72.
b. Element [1.1]: “generating codebook subset restriction signaling that, for

each of one or more groups of precoders, jointly restricts the precoders in the
group”
Novlan discloses or renders obvious this element. See Ex. 1003 ¶¶73–79.
First, Novlan discloses or renders obvious codebook subset restriction
signaling. See id. ¶74. For example, Novlan states: “Codebook subset restriction
can be signaled to a UE by using a bitmap in a UE-specific manner.” See Ex. 1005
¶101; See also id. ¶4 (“The method includes receiving from an eNodeB (eNB) an
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indication of a restricted subset M of vertical precoding matrices, wherein M is less
than a total number of vertical precoding matrices N in a codebook”); Ex. 1003 ¶74.
Novlan’s signaling identifies a group of exclusively permitted precoders, where the
subset is denoted by the symbol M. See Ex. 1005 ¶5 (“a restricted subset M of []
precoding matrices, wherein M is less than a total number of [] precoding matrices
N in a codebook”). As Novlan explains, a UE is precluded from selecting any
precoding matrix that is outside of the subset M of precoding matrices exclusively
permitted by the eNB. See id. ¶57 (“[T]he UE only measures CQI on the [M]
restricted matrices and only reports its selection” among the M precoder matrices.);
Ex. 1003 ¶¶74–75. A POSITA would understand that this signaling is codebook
subset restriction signaling, because it restricts the UE from using any precoders in
the codebook that are not permitted by the eNB. See id. ¶75.
Second, Novlan also discloses or renders obvious at least one group of
precoders, which is “one or more groups of precoders.” See id. ¶76. For example,
with reference to Figure 7, Novlan teaches that a UE may only use precoders that
are consistent with the spatial geometry of where the UE is located, and that a UE
may be restricted from using any other precoders. See Ex. 1005 ¶54 (“restrict the
UE to searching through the codebook only over those precoders that correspond to
[the] relevant spatial domain.”). These restricted precoders that do not correspond
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to the relevant spatial domain constitute a group of precoders, as do the permitted
precoders that do correspond to the relevant spatial domain. See Ex. 1003 ¶76.
Third, Novlan discloses or renders obvious jointly restricting the precoders in
this group. See id. ¶77. For example, Novlan explains and renders obvious to a
POSITA that it is possible restrict several groups of precoders that do not correspond
to the relevant spatial domain out of a codebook of 16 total precoders using one two-
bit signal, thereby jointly restricting them from use. See id. For example, in one
embodiment, Novlan explains that the base station indicates to the UE which four
(in this example) precoder matrices are permitted—and which 12 precoders are
restricted—by sending a two-bit value of a “PMI indication field” that is referenced
against the following table from Novlan:
See Ex. 1005 at Table 1; id. ¶64 (“indicate[s] to the UE the desired M=4 precoding
matrices out of the total N.”). For example, a PMI indication value of “00” indicates
PMI Indices “1, 5, 9, 13,” thereby setting which precoders the UE can choose from
(i.e., the group of 1, 5, 9, and 13) and which precoders the UE cannot choose from
(i.e., the group of 2, 6, 10, 14; the group of 3, 7, 11, 15; and the group of 4, 8, 12,
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16). See id.; Ex. 1003 ¶77. This constitutes joint restriction because it restricts
multiple precoders without requiring a bit associated with each individual precoder
matrix. Compare Ex. 1001 at 2:49–51 (“Signaling a codebook subset restriction in
the conventional way by means of a bitmap with one bit for every precoder can thus
impose a large overhead….”), with id. at 13:24–27 (“jointly restricts the precoders
in the group, e.g., with a single signaling bit….”); Ex. 1003 ¶78. As Dr. Kakaes
further explains, it would have been obvious to a POSITA to apply this joint
codebook subset restriction signaling to restrict those groups in Table 1 that do not
correspond to the “relevant spatial domain,” in accordance with Novlan’s teachings.
See id. ¶79. This “general method of restriction” taught in paragraph 64 and Table
1 of Novlan immediately follows Novlan’s teachings in paragraph 54 to restrict those
precoders that do not correspond to the “relevant spatial domain.” Therefore, a
POSITA would have been motivated to use that method to restrict the use of
precoders that do not match the relevant spatial domain of a UE, and the “relevant
spatial domain” would drive the selection of the PMI indication field that is
associated with the group of precoders that correspond to the most relevant spatial
domain. See Ex. 1003 ¶79.
c. Element [1.2]: “by restricting a certain component that the precoders in the
group have in common, wherein the codebook subset restriction signaling is
rank-agnostic signaling that jointly restricts the precoders in a group without
regard to the precoders’ transmission rank;”
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Novlan by itself, or in view of 36.213, discloses or renders this element
obvious. See id. ¶¶80–92.
To begin, Novlan teaches to a POSITA restricting a certain component that
the precoders in the group have in common. See id. ¶¶80–81. In particular, the
precoders in the group identified above (those that do not “correspond to [the]
relevant spatial domain”) would all have a certain component in common, 𝑣𝑚, that
is associated with a particular elevation angle that is outside of the relevant spatial
domain. See id. ¶81. Novlan teaches that rank-1 precoders (represented by variable
W(1)) can be represented by a matrix which includes 𝑣𝑚:
See Ex. 1005 ¶78 (Table 7.2.4-1). In the case where a particular elevation angle is
restricted, for example 80° up from the horizontal which is a far higher elevation
than any buildings near the base station and thus outside the “relevant spatial
domain,” all precoders with a same value of 𝑣𝑚 that corresponds to 80° would be
restricted from use. See Ex. 1005 ¶54; Ex. 1003 ¶81.
Novlan also discloses or renders obvious to a POSITA that this restriction is
rank-agnostic and jointly restricts the precoders in this group without regard to the
precoders’ transmission rank, because the restriction is based on elevation angle
ranges, not on rank. Ex. 1003 ¶82. Novlan teaches “restrict[ing] the UE to searching
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through the codebook only over those precoders that correspond to [the] relevant
spatial domain.” See Ex. 1005 ¶54. Novlan does not rely on rank in performing
this restriction, only on angles, and is thus agnostic to rank. Ex. 1003 ¶82.
Novlan further teaches to a POSITA, and a POSITA would understand from
reading Novlan, that while codebook subset restriction can be based on rank in whole
or part, it can also be based only on transmission mode, i.e., rank agnostic: “The
number of bits in codebook subset restriction bitmap [] may be configured based on
applicable transmission modes and/or the rank of the transmission.” See Ex. 1005
¶104; Ex. 1003 ¶83. As Dr. Kakaes explains, a POSITA would understand and find
obvious that this rank-agnostic approach to restriction can be used in connection
with Novlan’s teachings regarding restricting precoders that do not “correspond to
[the] relevant spatial domain” and would be one instance where the restriction
bitmap “may” not be configured based on the rank of the transmission. See Ex. 1003
¶84.
Novlan alone or alternatively in view of 36.213 also teaches and renders
obvious to a POSITA that Novlan’s restriction teaching is rank-agnostic when
applied to codebooks of multiple different ranks based on elevation angle rather than
based on rank. See id., ¶85. As background, Novlan teaches to a POSITA the use
of rank-2 precoders (and higher-rank precoders). See Ex. 1005, e.g., ¶48
(“Assuming a typical configuration of two receiver antennas at the UE, single user
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MIMO (SU-MIMO) up to rank 2 can be supported.”); Ex. 1003 ¶85. A POSITA
reading Novlan would understand, and find obvious, that a rank-2 precoder would
look similar to Novlan’s rank-1 precoder and have the same types of components,
but would have 2 columns instead of one. See Ex. 1003 ¶85.
A POSITA would also understand the form of a rank-2 precoder from 36.213.
Ex. 1003 ¶86. As discussed above, 36.213 is an LTE Technical Specification that
addresses precoder subset restriction in LTE networks. See Section VII.B. Because
Novlan addresses LTE networks, a POSITA would naturally look to 36.213 to
complement and understand Novlan’s teachings in this regard. See Ex. 1003 ¶86.
Indeed, an earlier, less-developed version of 36.213 is cited and incorporated in
Novlan (See Ex. 1005 ¶20), and a POSITA would naturally look to a more current
version of 36.213 at the time of the alleged invention of the ’600 Patent to better
understand precoder subset restriction in LTE networks at that point in time. See
Ex. 1003 ¶86. 36.213 expressly teaches that rank-2 precoders (represented by
variable W(2)) are a matrix that include the same component 𝑣𝑚 as is found in
Novlan’s definition of rank-1 precoders:
See Ex. 1006 at 97 (Table 7.2.4-2).
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As explained by Dr. Kakaes, to the extent not taught by Novlan, a POSITA
would be motivated to use 36.213’s rank-2 precoder with Novlan because a rank-2
transmission provides an additional transmission layer beyond a rank-1 transmission
that can be used to carry information to the UE, thereby increasing the rate and
quality of data transmitted to the UE. See Ex. 1003 ¶88; Ex. 1001 at 1:31–35. Thus,
in the context of Novlan’s Figure 7, for example, transmitting information on both
rank-1 and rank-2 transmission layers would allow the UE on the top floor of the
building to be better served by the base station. As a result, 36.213’s rank-2 precoder
is a known technique that can improve Novlan’s similar techniques in a predictable
manner, as it would be applied in substantially the same way that Novlan applies its
techniques to rank-1 precoders. See Ex. 1003 ¶88. Further, as Dr. Kakaes explains,
a POSITA would have a reasonable expectation of success in implementing this
combination, because codebook subset restriction was already well known in the art
as evidenced by Novlan and also by 36.213 (See Ex. 1006 at 62 (“Codebook subset
restriction is supported”)), and expanding Novlan’s restriction method to rank 2
would involve routine software coding well within the knowledge and skill of a
POSITA. See Ex. 1003 ¶89.
As Dr. Kakaes further explains, it would have been understood and obvious
to a POSITA that when Novlan’s “relevant spatial domain” restriction is applied to
Novlan’s rank-1 and 36.213’s rank-2 precoders, they would all have 𝑣𝑚 as a
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component, as shown above. See Ex. 1003 ¶90; Ex. 1006 at 97 (Table 7.2.4-2); Ex.
1005 ¶77 (Table 7.2.4-1). Further, the 𝑣𝑚 values would be identical for the same
elevation angle. See Ex. 1003 ¶90. Thus, it would have been obvious to a POSITA
that Novlan’s rank-1 and 36.213’s rank-2 precoders that have the same 𝑣𝑚 value
would be restricted when that 𝑣𝑚 is associated with angles that do not “correspond
to [the] relevant spatial domain,” because both the rank-1 and rank-2 precoders
would otherwise be aiming antenna beams at an elevation angle where there are no
UEs. See Ex. 1005 ¶54; Ex. 1003 ¶90.
Indeed, a POSITA would recognize that there is no reason to prohibit one
specific rank of precoders aimed at an irrelevant elevation angle but allow another
rank of precoders that also direct antenna beams to the same irrelevant elevation
angle; doing so would needlessly permit wasted energy on the antenna beams and
undermine the utility of Novlan’s insight that UEs should be restricted to searching
through the codebook “only” over those precoders that correspond to the relevant
spatial domain (without any reference to rank). See Ex. 1005 ¶54; Ex. 1003 ¶91. A
POSITA would instead apply the “relevant spatial domain” restriction to all ranks in
order to maximize the number of precoders that are restricted, which reduces the
computation complexity for the UE’s search for the optimal precoder. See Ex. 1005
¶54 (“[O]ne method for improving the efficiency of vertical PMI selection and
reducing CQI computation complexity is to restrict the UE to searching through the
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codebook only over those precoders that correspond to [the] relevant spatial
domain.”); Ex. 1003 ¶91.
It would therefore be obvious to a POSITA to apply Novlan’s spatial
restriction technique in a rank-agnostic manner to both Novlan’s rank-1 precoders
and 36.213’s rank-2 precoders, based on angles rather than rank, particularly in view
of Novlan’s teaching discussed above that codebook subset restriction signaling can
be rank-agnostic and be based on things other than rank such as transmission modes
or something else altogether. See Ex. 1005 ¶104 (“The number of bits in codebook
subset restriction bitmap [] may be configured based on applicable transmission
modes and/or the rank of the transmission.”); Ex. 1003 ¶92.
d. Element [1.3]: “and sending the generated signaling from the network node
to the wireless communication device.”
Novlan discloses or renders obvious sending the generated signaling from the
network node (eNodeB) to the wireless communication device (UE). See Ex. 1003
¶¶93–95. For example, Novlan teaches: “The method includes receiving from an
eNodeB (eNB) an indication of a restricted subset M of vertical precoding
matrices….” Ex. 1005 ¶4; See also id., e.g., ¶101 (“Codebook subset restriction can
be signaled to a UE by using a bitmap in a UE-specific manner.”).
In the context of Novlan’s Table 1 as discussed above, Novlan specifically
teaches: “[T]he eNB [network node] uses values of the PMI mapping field given in
a higher-layer configuration message as shown in Table 1 below to indicate to the
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UE [wireless communication device] the desired M=4 precoding matrices out of the
total N=16.” See Ex. 1005 ¶64. A POSITA would recognize that the “indicat[ion]
to the UE” is a signaling message because signaling messages are how indications
of such information are transmitted from eNB (network node) to the UE (wireless
communication device). See Ex. 1003 ¶94. And, as Dr. Kakaes explains, a POSITA
would understand and find obvious that this restriction signaling can be used in
connection with Novlan’s Figure 7 embodiment. See id. ¶95.
2. Dependent Claim 2
a. Preamble: “The method of claim 1, wherein”
Novlan by itself, or in view of 36.213, renders obvious claim 1. See Claim 1
b. Element [2.1]: “a precoder comprising one or more beam precoders is

restricted if at least one of its one or more beam precoders is restricted.”
Novlan discloses or renders obvious this element. See id. ¶¶98–100.
Novlan teaches a precoder comprising one or more beam precoders. As
background, the ’600 Patent states:
[A] precoder at one level of granularity consists of one or more different

components that are referred to as one or more so-called “beam
precoders”. Each precoder W in this regard consists of one or more
beam-forming vectors b0, b1, … , bX that are referred to as beam
precoders.
Ex. 1001 at 14:1–6. The ’600 Patent thus refers to the beamforming vectors within
the precoder matrix as a “beam precoder,” which corresponds to the beamforming
vector 𝑣𝑚 in Novlan and 36.213. See Ex. 1003 ¶98. A POSITA would recognize
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that 𝑣𝑚 is a vector from its matrix notation (see Ex. 1006 at 66; Ex. 1005 ¶¶77, 84),
and further that this vector is a beamforming vector (see Ex. 1005 ¶41:
“beamforming in LTE”) because forming antenna beams is the purpose of this vector
in Novlan and 36.213. See Ex. 1003 ¶98. Thus, therefore, the component 𝑣𝑚 in
Novlan’s and 36.213’s precoders is a beam precoder, corresponding to beam
precoders such as b0 in the ’600 Patent.
In Novlan’s rank-1 precoder, the beam precoder 𝑣𝑚 appears in both rows of
the precoder:
See Ex. 1005 ¶78 (highlighting added). This is the “certain component” that is
restricted in accordance with Novlan’s teachings when associated with angles that
do not correspond to the “relevant spatial domain.” See Claim 1.2. Thus, when this
beam precoder 𝑣𝑚 is restricted, the precoder matrix is restricted because Novlan’s
restriction would apply to every element of the precoder matrix. See Ex. 1003 ¶99.
Novlan by itself, or in view of 36.213, renders obvious claim 1. See Claim
1.
b. Element [3.1]: “the certain component comprises a beam precoder.”
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Novlan discloses or renders obvious a certain component comprising a beam
precoder. See Ex. 1003 ¶102. As described above in Claim 2.1, the “certain
component” 𝑣𝑚 corresponds directly to the beam precoder “b” in the ’600 Patent.
See Claim 2.1.
3. See Claim 3.
b. Element [4.1]: “a beam precoder is a Kronecker product of different

beamforming vectors associated with different dimensions of a multi-
dimensional antenna array.”
Novlan discloses or renders obvious a beam precoder that is a Kronecker
product of different beamforming vectors associated with different dimensions of a
multi-dimensional antenna array. See Ex. 1003 ¶¶104–108. The Examiner already
found during prosecution that Novlan teaches wherein a beam precoder is a
Kronecker product. See Ex. 1002 at 313.
Novlan teaches a multi-dimensional antenna array. See Ex. 1005, e.g., ¶2
(“The present application relates generally to wireless communication and, more
specifically, to methods and apparatus for codebook subset restriction for two-
dimensional advanced antenna systems.”); Ex. 1003 ¶105. As shown, for example,
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in Figure 4 of Novlan below, the antenna array includes both horizontal and vertical
dimensions:
See also Ex. 1005 ¶37. This multi-dimensional antenna array can form beams in
both the horizontal (azimuthal) dimension and the vertical (elevation) dimension, as
shown, for example, in Figure 5 of Novlan:
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See also id., ¶40.
In order to account for both the horizontal and vertical dimensions of the
multi-dimensional antenna array, Novlan’s beam precoders are associated with both
dimensions, specifically as a Kronecker product of different beamforming vectors,
in order to form beams in both the horizontal and vertical direction. See Ex. 1003,
¶106. Novlan teaches that its precoders can be resolved into the Kronecker product
of its horizontal and vertical components:
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where corresponds to the precoder associated with the vertical direction and
corresponds to the precoder associated with the horizontal direction. See Ex.
1005 ¶43; Ex. 1003 ¶106. Because the Kronecker product precoders are comprised
of their constituent beam precoders (e.g., the component 𝑣𝑚), a POSITA would
understand and find obvious that Novlan’s beam precoders are themselves
mathematically equivalent to Kronecker products of different beamforming vectors
associated with the vertical direction and horizontal direction. See Ex. 1003 ¶106.
Moreover, a POSITA would understand and find obvious that a beam precoder is a
Kronecker product of different beamforming vectors when a precoder is
approximated into the Kronecker product of its horizontal and vertical components.
See Ex. 1005 ¶43; Ex. 1003 ¶¶106–107.

4.
b. Element [5.1]: “the different beamforming vectors comprise Discrete

Fourier Transform (DFT) vectors.”
Novlan discloses or renders obvious the different beamforming vectors
comprise Discrete Fourier Transform (DFT) vectors. See Ex. 1003 ¶¶110–111. The
Examiner already found during prosecution that Novlan teaches wherein the
different beamforming vectors comprise DFT vectors. See Ex. 1002 at 314.
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For example, Novlan describes using a “DFT-based codebook.” See Ex. 1005
¶75; see also id., e.g., ¶82 (“DFT codebook”). Because that DFT-based codebook
would be comprised of the beamforming vectors in the constituent precoder matrices
within that DFT-based codebook, a POSITA would understand and find obvious that
the “DFT-based codebook” comprises different beamforming vectors that are in turn
comprised of DFT vectors—that is what makes the codebook “DFT-based” in the
first place. See Ex. 1003 ¶110; see also Ex. 1005, e.g., ¶126 (“[T]he UE knows to
select a size 64 DFT codebook, and may further perform subset restrictions on the
DFT codebook by selecting only a subset of precoding vectors from the codebook.”).
Novlan by itself, or in view of 36.213, renders obvious claim 3. See Claim 3.
b. Element [6.1]: “the beam precoder is a beamforming vector used to transmit

on a particular layer of a multi-layer transmission; and wherein”
Novlan by itself, or in view of 36.213, discloses or renders obvious the beam
precoder is a beamforming vector used to transmit on a particular layer of a multi-
layer transmission. See Ex. 1003 ¶¶113–114. As discussed above in the context of
Claim 2.1, the “certain component” 𝑣𝑚 is a beam precoder that is a beamforming
vector used to form antenna beams. See Claim 2.1.
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This beam precoder is used to transmit on a particular layer of a multi-layer
transmission. See Ex. 1003 ¶114. The definition of, for example, a rank-2 precoder
(W) from 36.213 comes from the “Codebook for 2-layer CSI reporting”:
See Ex. 1006 at Table 7.2.4-2; Ex. 1003 ¶114. As described in the Background
Section IV above, the rank of the precoder (which corresponds to the number of
columns in the precoder matrix3) is associated with the number of distinct
transmission layers—i.e., the number of antenna beams formed by that particular
precoder matrix. See, e.g., Ex. 10134 at 158 (“the number of transmitted layers (the
‘transmission rank’)”); Ex. 1003 ¶114. In the same way, a POSITA would
3
As Novlan teaches and a POSITA would understand from 36.213, the number of
columns in a precoder matrix corresponds to the transmission rank. See Ex. 1005
¶43 (“It can be shown that the precoder can be approximated into horizontal and
vertical components, , where n is the rank of transmission.”);
Ex. 1003 ¶114.

4
Dahlman (Ex. 1013) was published and publicly available in Winter 2010, well
before the ’600 Patent’s earliest possible priority date of January 14, 2015. Ex.
1017 (Munford Decl.), ¶9.
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understand that Novlan’s teaching of rank-2 precoders would correspond to a multi-
layer transmission. See Ex. 1005, e.g., ¶48 (“rank 2 can be supported”); Ex. 1003
¶114.
The “certain component” 𝑣𝑚 in the first column of this rank-2 precoder matrix
is therefore used to transmit on a particular layer (in this case, the first layer) of a
multi-layer transmission (in this case, a 2-layer transmission), as shown by the fact
that it is in the first column. See id., ¶114.
c. Element [6.2]: “different scaled versions of that beamforming vector are

transmitted on different polarizations.”
Novlan by itself, or in view of 36.213, discloses or renders obvious different
scaled versions of that beamforming vector are transmitted on different
polarizations. See id. ¶¶115–18.
To begin, 36.213 teaches different scaled versions of the beamforming vector.
36.213 expresses a rank-2 precoder (W) as follows:
See Ex. 1006 at Table 7.2.4-2. The quantity 𝜑𝑛𝑣𝑚 in the second row of the first
column is a scaled version of the beamforming vector 𝑣𝑚 in the first row of the first
column (scaled by the factor 𝜑𝑛). See Ex. 1003 ¶116. Thus, 36.213 teaches different
scaled versions (i.e., 𝜑𝑛𝑣𝑚) of the beamforming vector (i.e., 𝑣𝑚). Novlan’s teaching
of rank-1 precoders has the same inputs as the first column of 36.213’s rank-2
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precoder, and therefore also teaches different scaled versions (i.e., 𝜑𝑛𝑣𝑚) of the
beamforming vector (i.e., 𝑣𝑚). See Ex. 1005 ¶78 (Table 7.2.4-1); Ex. 1003 ¶116.
Novlan and 36.213 each disclose or render obvious that the different scaled
versions of the beamforming vector are transmitted on different polarizations. As a
POSITA would recognize, the purpose of applying this 𝜑𝑛 scaling factor to a beam
targeted in the same direction (as indicated by the fact that both rows in the column
rely on the same beamforming vector 𝑣𝑚) is to correct for the phase misalignment
when transmitting on different polarizations. See Ex. 10165 at 663 (“Cross-polarized
dimensions … are combined with co-phasing factors represented by quaternary
symbols”) (emphasis in original); Ex. 1003 ¶117. A POSITA would also find it
obvious to use the scaling factor applied by Novlan and by 36.213 for this purpose
of facilitating transmission on different polarizations, at least because it was well-
known in the art that it was desirable to transmit on different polarizations to enhance
signal quality. See, e.g., Ex. 1008 at 9:9–12 (“[I]t is desirable to ensure that one set
of the MIMO precoder weights w1, w2, w3, w4 in view of the precoder matrix P
results in vertical and horizontal polarizations for the MIMO signals transmitted
5
Sesia (Ex. 1016) was published and publicly available no later than April 14,
2012, well before the ’600 Patent’s earliest possible priority date of January 14,
2015. Ex. 1014 (Mullins Decl.), ¶46.
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from the antenna arrangement 16.”); Ex. 1013 at 59–60 (discussing benefits of
“apply[ing] different polarization directions”); Ex. 1003 ¶118.
Novlan by itself, or in view of 36.213, renders obvious claim 3. See Claim 3.
b. Element [7.1]: “the beam precoder is a Kronecker product of first and second
beamforming vectors with first and second indices, wherein”
Novlan discloses or renders obvious a beam precoder that is a Kronecker
product of first and second beamforming vectors with first and second indices. See
Ex. 1003 ¶¶120–21.
As discussed above in the context of Claim 4, Novlan’s beam precoders are a
Kronecker product of first second beamforming vectors, one horizontal and one
vertical. See Claim 4. As illustrated in Novlan’s Table 5 below, the horizontal beam
precoders are associated with “H-PMI indices” and the vertical beam precoders are
associated with “V-PMI indices”:
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See Ex. 1005 ¶116. Thus, Novlan teaches that the beam precoder is a Kronecker
product of first (i.e., horizontal) and second (i.e., vertical) beamforming vectors with
first (i.e., H-PMI) and second (i.e., V-PMI) indices. See Ex. 1003 ¶121.
c. Element [7.2]: “the first and second beamforming vectors are associated
with different dimensions of a multi-dimensional antenna array, and
wherein”
Novlan discloses or renders obvious the first and second beamforming vectors
are associated with different dimensions of a multi-dimensional antenna array. See
id. ¶122. In particular, the first beamforming vector is associated with the horizontal
dimension and the second beamforming vector is associated with the vertical
dimension, in a multi-dimensional antenna array that includes both horizontal and
vertical dimensions. See Claim 4.1.
d. Element [7.3]: “the codebook subset restriction signaling jointly restricts

the precoders in a group of precoders that have the same pair of values for
the first and second indices.”
Novlan discloses or renders obvious this element. See Ex. 1003 ¶¶123–24.
As discussed above, Novlan teaches codebook subset restriction signaling that
jointly restricts the precoders in a group of precoders. See Claim 1.1. Novlan further
teaches codebook subset restriction signaling that jointly restricts the precoders in a
group of precoders that have the same pair of values for the first (horizontal) and
second (vertical) indices. Novlan’s Table 5 is used to signal joint restriction of
precoders with certain horizontal (first) and vertical (second) indices:
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See Ex. 1005 ¶116 (“[S]ubset restriction of Vertical and Horizontal PMI is designed,
selected, or configured jointly.”). In accordance with Novlan’s Table 5, a joint H-
PMI and V-PMI indication field of “1” indicates that precoders with horizontal PMI
indices of 5, 6, 7, and 8 are allowed and precoders with vertical PMI indices of 3 and
4 are allowed. See id. At the same time, precoders with horizontal PMI indices of
1, 2, 3, and 4 would be restricted along with precoders with vertical PMI indices of
1 and 2. As a result, precoders that have an index of 1 for both their H-PMI and their
V-PMI would be restricted, as would precoders with an index of 2 for both their H-
PMI and their V-PMI. Moreover, all precoders that have H-PMI index 1 and V-PMI
index 2 (for example) would be restricted, regardless of how many such precoders
there were. See id.; See Ex. 1003 ¶124.
a. Preamble: “A method implemented by a wireless communication device for

decoding signaling from a network node indicating which precoders in a
codebook are restricted from being used, the method characterized by:”
To the extent the preamble of claim 8 is limiting, Novlan discloses it or
renders it obvious. See id. ¶¶125–26. As discussed in the context of Claim 1
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Preamble, a network node (eNB base station) sends a signal to a wireless
communication device (UE) indicating which precoders in a codebook are restricted
from being used. See Claim 1 Preamble. The preamble of Claim 8 merely reflects
the receipt and use of that signal by the UE, which Novlan teaches. See Ex. 1005,
e.g., ¶4 (“The method includes receiving from an eNodeB (eNB) an indication of
a restricted subset M of vertical precoding matrices”), cl. 8 (“UE comprising … a
processor … configured to: receive from the eNB an indication of a restricted
subset M of vertical precoding matrices.”). Novlan teaches that the UE would
decode this signal after receipt so that the signal can be used for its intended purpose;
otherwise, the signal would have no effect. See id., cl. 8 (“determine vertical
precoding matrix indicators (V-PMI) to feed back to the eNB based on the restricted
subset of vertical precoding matrices” indicated by the eNB), ¶34 (“The transmitted
RF signal arrives at UE 116 after passing through the wireless channel and reverse
operations to those at eNB 102 are performed. … Channel decoding … then decodes
the modulated symbols to recover the original input data stream.”); Ex. 1003 ¶126.
b. Element [8.1]: “receiving codebook subset restriction signaling that, for each
of one or more groups of precoders, jointly restricts the precoders in the
group”
Novlan by itself, or in view of 36.213, discloses or renders obvious receiving
codebook subset restriction signaling that, for each of one or more groups of
precoders, jointly restricts the precoders in the group. See id. ¶¶127–28.
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U.S. Patent No. 10,193,600
Most of this element is identical to Claim 1.1, and therefore the analysis is the
same. See Claim 1.1; Ex. 1003 ¶127. The only difference is that, in this claim, the
codebook subset restriction signaling is “receiv[ed]” by the UE as opposed to
“generat[ed]” by the base station. But Novlan teaches receiving such codebook
subset restriction signaling. See Ex. 1005, e.g., ¶101 (“Codebook subset restriction
can be signaled to a UE by using a bitmap in a UE-specific manner.”); Ex. 1003
¶128.
c. Element [8.2]: “by restricting a certain component that the precoders in the
group have in common, wherein the codebook subset restriction signaling is
rank-agnostic signaling that jointly restricts the precoders in a group without
regard to the precoders’ transmission rank; and”
This element is identical to Claim 1.2 and therefore the analysis is the same.
See Claim 1.2; Ex. 1003 ¶129.
d. Element [8.3]: “decoding the received signaling as jointly restricting

precoders in each of the one or more groups of precoders.”
Novlan discloses or renders obvious decoding the received signaling as jointly
restricting precoders in each of the one or more groups of precoders. See Ex. 1003
¶130. As discussed above in the context of Claim 1.3, the base station sends a signal
to the UE to jointly restrict precoders in at least one group of precoders. See Claim
1.3. This element merely reflects the UE’s receipt and decoding of that signal for
the purpose of actually using it, which Novlan teaches. See Ex. 1005, e.g., ¶¶102
(“interpretation of values in the bitmap”), 103 (same), 34 (“The transmitted RF
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signal arrives at UE 116 after passing through the wireless channel and reverse
operations to those at eNB 102 are performed. … Channel decoding and
demodulation block 280 demodulates and then decodes the modulated symbols to
recover the original input data stream.”), 122 (“In a first method of PMI subset
restriction indication via antenna configuration signaling, the codebook subset
restriction parameters are known or determined at the receiver….”), 127 (“the
codebooks are known or determined at the receiver”), cl. 8 (“determine vertical
precoding matrix indicators (V-PMI) to feed back to the eNB based on the restricted
subset of vertical precoding matrices” indicated by the eNB). As a POSITA would
recognize, in order for the UE to interpret the signal and determine which precoder
matrix to use, it would have to decode the signal it receives from the base station
that restricted certain precoders, otherwise the signal would not be used. Ex. 1003
¶130 (explaining that the base station’s signal would have to be decoded in order to
be used by the UE to “determine” which precoders are restricted).
a. “The method of claim 8, wherein a precoder comprising one or more beam

precoders is restricted if at least one of its one or more beam precoders is
restricted.”
This claim is identical to Claim 2 except it depends on a different claim. As
discussed above, Novlan by itself, or in view of 36.213, renders obvious claim 8.
See Claim 8. Novlan by itself, or in view of 36.213, also renders obvious the
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additional limitation of Claim 9, which is identical to the additional limitation of
Claim 2. See Claim 2; Ex. 1003 ¶131.
a. “The method of claim 8, wherein the certain component comprises a beam

precoder.”
a. “The method of claim 10, wherein a beam precoder is a Kronecker product

of different beamforming vectors associated with different dimensions of a
multi-dimensional antenna array.”
a. “The method of claim 11, wherein the different beamforming vectors comprise
Discrete Fourier Transform (DFT) vectors.”
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a. “The method of claim 10, wherein the beam precoder is a beamforming vector
used to transmit on a particular layer of a multi-layer transmission; and
wherein different scaled versions of that beamforming vector are transmitted
on different polarizations.”
a. “The method of claim 8, wherein the beam precoder is a Kronecker product

of first and second beamforming vectors with first and second indices,
wherein the first and second beamforming vectors are associated with
different dimensions of a multi-dimensional antenna array, and wherein the
codebook subset restriction signaling jointly restricts the precoders in a group
of precoders that have the same pair of values for the first and second
indices.”
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a. Preamble: “A network node for signaling to a wireless communication device

which precoders in a codebook are restricted from being used, the network
node comprising:”
This preamble is merely the apparatus counterpart directed to the network
node performing the method of Claim 1. Compare Claim 1 Preamble (“A method
implemented by a network node for signaling to a wireless communication device
which precoders in a codebook are restricted from being used”). The analysis
above is therefore directly applicable to this preamble. See Claim 1 Preamble; Ex.
1003 ¶137.
b. Element [15.1]: “a processor and a memory,”
Novlan discloses or renders obvious a network node comprising a processor
and a memory. See Ex. 1003 ¶¶138–40. For example, Novlan teaches: “The eNB
includes at least one antenna and a processor….” Ex. 1005 ¶6. A POSITA would
also have understood that eNBs in LTE systems include memories. Ex. 1003 ¶138;
see also, e.g., Ex. 1015 ¶39 (explaining that eNBs in 4G systems include “a DP [data
processor], [and] a MEM [memory] that stores a PROG [program.]”). Moreover, as
a POSITA would recognize, all modern processors are used in conjunction with at
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least some type of memory, even if only a buffer, cache, or register to temporarily
store data and intermediate calculations, and additionally some other form of
memory from which to pull input data from and to which results are output. See Ex.
1003 ¶139. Accordingly, a POSITA would recognize that Novlan teaches a memory
to be used with its processor. See Ex. 1005 ¶6; Ex. 1003 ¶139.
A POSITA would also find it obvious to include a memory alongside
Novlan’s processor, at least because all modern processors use some type of memory
and also because one would not be able to comply with the 4G LTE standard (which
provides the context for Novlan and 36.213) and communicate successfully with
others on the network without a memory. Ex. 1003 ¶140; see also, e.g., Ex. 1013 at
90 (“In hybrid ARQ with soft combining, the erroneously received packet is stored
in a buffer memory….”), 146–47 (discussing channel coding in LTE using
“interleaver memory”).
c. Element [15.2]: “the memory containing instructions executable by the

processor whereby the network node is configured to:”
Novlan discloses or renders obvious the memory containing instructions
executable by the processor whereby the network node is configured to perform the
steps below. See Ex. 1003 ¶¶141–42. Novlan teaches that the base station’s
“processor is configured to transmit to a UE an indication of a restricted subset M
of vertical precoding matrices.” See Ex. 1005 ¶6. As a POSITA would understand,
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and find obvious, the way that a “processor is configured” is by reference to a
memory containing instructions executable by the processor. See Ex. 1003 ¶142.
d. Element [15.3]: “generate codebook restriction signaling that, for each of

one or more groups of precoders, jointly restricts the precoders in the group
by restricting a certain component that the precoders in the group have in
common, wherein the codebook subset restriction signaling is rank-agnostic
signaling that jointly restricts the precoders in a group without regard to the
precoders’ transmission rank; and send the generated signaling from the
network node to the wireless communication device.”
This element is identical to the limitations in Claims 1.1–1.3, and therefore
the same analysis applies. See Claim 1; Ex. 1003 ¶143.
a. “The network node of claim 15, wherein a precoder comprising one or more
beam precoders is restricted if at least one of its one or more beam precoders
is restricted.”
a. “The network node of claim 15, wherein the certain component comprises a
beam precoder.”
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a. “The network node of claim 17, wherein a beam precoder is a Kronecker

product of different beamforming vectors associated with different dimensions
of a multi-dimensional antenna array.”
a. “The network node of claim 18, wherein the different beamforming vectors
comprise Discrete Fourier Transform (DFT) vectors.”
a. “The network node of claim 17, wherein the beam precoder is a beamforming
vector used to transmit on a particular layer of a multi-layer transmission;
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U.S. Patent No. 10,193,600
and wherein different scaled versions of that beamforming vector are
transmitted on different polarizations.”
a. “The network node of claim 17, wherein the beam precoder is a Kronecker
product of first and second beamforming vectors with first and second indices,
wherein the first and second beamforming vectors are associated with
different dimensions of a multi-dimensional antenna array, and wherein the
codebook subset restriction signaling jointly restricts the precoders in a group
of precoders that have the same pair of values for the first and second
indices.”
a. Preamble: “A wireless communication device for decoding signaling from a

network node indicating which precoders in a codebook are restricted from
being used, the wireless communication device comprising:”
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This preamble is merely the apparatus counterpart directed to the wireless
communication device performing the method of Claim 8. Compare Claim 8
Preamble (“A method implemented by a wireless communication device for
decoding signaling from a network node indicating which precoders in a codebook
are restricted from being used”). The analysis above is therefore directly applicable
to this preamble. See Claim 8 Preamble; Ex. 1003 ¶150.
b. Element [22.1]: “a processor and a memory,”
Novlan discloses or renders obvious that the wireless communication device
(UE) includes a processor and a memory. See Ex. 1003 ¶¶151–53. For example,
Novlan teaches: “The UE includes at least one antenna and a processor….” See Ex.
1005 ¶5. A POSITA would also have understood that UEs in LTE systems include
memories (and processors). Ex. 1003 ¶151; see also, e.g., Ex. 1015 ¶39 (explaining
that UEs in 4G systems “includes a data processor (DP) [and] a memory (MEM) []
that stores a program”). Also, as discussed above in the context of the similar
limitation of Claim 15.1, a POSITA would recognize that all modern processors are
used in conjunction with at least some type of memory, even if only a buffer, cache,
or register to temporarily store data and intermediate calculations, and additionally
some other form of memory from which to pull input data from and to which results
are output. See Ex. 1003 ¶152.
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A POSITA would also find it obvious to include a memory alongside
Novlan’s processor, at least because all modern processors use some type of memory
and also because one would not be able to comply with the 4G LTE standard (which
provides the context for Novlan and 36.213) and communicate successfully with
others on the network without a memory. Ex. 1003 ¶153; see also, e.g., Ex. 1013 at
90 (“In hybrid ARQ with soft combining, the erroneously received packet is stored
in a buffer memory….”), 146–47 (discussing channel coding in LTE using
“interleaver memory”).
c. Element [22.2]: “the memory containing instructions executable by the

processor whereby the wireless communication device is configured to:”
Novlan discloses or renders obvious the memory containing instructions
executable by the processor whereby the wireless communication device is
configured to perform the steps below. See Ex. 1003 ¶¶154–55. Novlan teaches that
the UE’s “processor is configured to receive from the eNB an indication of a
restricted subset M of vertical precoding matrices….” See Ex. 1005 ¶5. As a
POSITA would understand and find obvious, the way that a “processor is
configured” is by reference to a memory containing instructions executable by the
processor. See Ex. 1003 ¶155.
d. Element [22.3]: “receive codebook subset restriction signaling that, for each
of one or more groups of precoders, jointly restricts the precoders in the
group by restricting a certain component that the precoders in the group have
in common, wherein the codebook subset restriction signaling is rank-
agnostic signaling that jointly restricts the precoders in a group without
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regard to the precoders’ transmission rank; and decode the received
signaling as jointly restricting precoders in each of the one or more groups of
precoders.”
This element is identical to the limitations in Claims 8.1–8.3, and therefore
the same analysis applies. See Claim 8; Ex. 1003 ¶156.
a. “The wireless communication device of claim 22, wherein a precoder

comprising one or more beam precoders is restricted if at least one of its one
or more beam precoders is restricted.”
a. “The wireless communication device of claim 22, wherein the certain

component comprises a beam precoder.”
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a. “The wireless communication device of claim 24, wherein a beam precoder is

a Kronecker product of different beamforming vectors associated with
different dimensions of a multi-dimensional antenna array.”
a. “The wireless communication device of claim 25, wherein the different

beamforming vectors comprise Discrete Fourier Transform (DFT) vectors.”
a. The wireless communication device of claim 24, wherein the beam precoder
is a beamforming vector used to transmit on a particular layer of a multi-
layer transmission; and wherein different scaled versions of that
beamforming vector are transmitted on different polarizations.”
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a. The wireless communication device of claim 24, wherein the beam precoder
is a Kronecker product of first and second beamforming vectors with first
and second indices, wherein the first and second beamforming vectors are
associated with different dimensions of a multi-dimensional antenna array,
and wherein the codebook subset restriction signaling jointly restricts the
precoders in a group of precoders that have the same pair of values for the
first and second indices.”
IX. SECONDARY CONSIDERATIONS
Petitioner is unaware of any evidence of secondary considerations that would
support a finding of non-obviousness. See Ormco Corp. v. Align Tech., Inc., 463
F.3d 1299, 1311–12 (Fed. Cir. 2006); Ex. 1003, ¶163. The asserted prior art cited
herein demonstrates there is no evidence of failure by others and that the features
recited in the Challenged Claims were readily available in the prior art. Even if
secondary considerations did exist (and they do not), they cannot overcome the
strong prima facie case of obviousness shown in this Petition. See Wyers v. Master
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U.S. Patent No. 10,193,600
Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010). Should Patent Owner attempt to
meet its burden to show secondary considerations, Petitioner reserves the right to
respond.
X. PTAB DISCRETION SHOULD NOT PRECLUDE INSTITUTION
A. The Advanced Bionics Test Favors Institution—§ 325(d)
Although Novlan was discussed by the Examiner during prosecution in the
context of two dependent claims (see Ex. 1002 at 313–14), it was not relied upon by
the Examiner as a primary reference for any of the Challenged Claims. And 36.213
was not before the Examiner at all during prosecution. See generally Ex. 1002.
Moreover, as discussed above, Novlan incorporates an earlier version of the 36.213
Technical Specification, version 10.1.0 (see Ex. 1005 ¶20), that is materially
different from the versions of 36.213 relied upon herein (version 12.3.0), particularly
because version 10.1.0 does not define rank-2 and higher-rank precoders. See
generally Ex. 1007 (version 10.1.0 not defining rank-2 and higher codebooks). The
Examiner therefore did not consider the same or substantially the same art that
Petitioner presents herein.
This Petition also does not present the same or substantially the same
arguments that were previously considered by the Office. During prosecution, the
Examiner only considered Novlan as a secondary reference in the context of two
dependent claims related to Kronecker products and DFT vectors (see Ex. 1002 at
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313–14); the Examiner did not apply Novlan in the context of the independent claims
or any of the other dependent claims. Nor did the Examiner consider 36.213 at all
since it was not presented during prosecution, and, as a result, the Examiner did not
consider the combination of Novlan in view of 36.213.
With regard to Novlan, there is no record evidence that the Examiner
appreciated the import of Novlan’s teachings (discussed above) about rank-agnostic
restriction of precoders. See, e.g., Ex. 1005 ¶¶49, 54; Advanced Bionics, LLC v.
Med-El Elektromedizinische Gerate GMBH, IPR2019-01469, Paper 6, at 10
(P.T.A.B. Feb. 13, 2020) (precedential) (“[I]f the record of the Office’s previous
consideration of the art is not well developed or silent, then a petitioner may show
the Office erred by overlooking something persuasive under [Becton, Dickinson]
factors (e) and (f).”). Instead, the Examiner relied upon Jing (Ex. 1011) as a primary
reference, which does not address the spatial or geometric factor in precoder
selection, and which also restricts precoders expressly in a rank-specific manner.
See Ex. 1011 at, e.g., Abstract. This petition thus presents a new primary and
secondary reference and focuses on a different aspect (the spatial aspect) that was
either not previously considered or was overlooked.
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B. The General Plastic Factors Favor Institution
The General Plastic factors (extended in Valve) weigh against denying
institution under § 314(a). Gen. Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha,
IPR2016-01357, Paper 19 at 15-19 (Sept. 6, 2017) (precedential).
Samsung previously challenged the ’600 Patent in IPR2021-00730
(“Samsung IPR”), which terminated pursuant to settlement prior to a preliminary
response. Because Apple was not a party to the Samsung IPR, this is Apple’s first
challenge to the ’600 Patent, and Apple has no relationship with Samsung, the first
five factors weigh against denial. Unified Patents, Inc. v. Certified Measurement,
LLC, IPR2018-00548, Paper No. 7 at 7-8 (Sept. 5, 2018); Valve Corp. v. Elec.
Scripting Prod., Inc., IPR2019-00062, Paper No. 11 at 2, 9-10, 12-13 (Apr. 2, 2019).
As to the sixth factor, the instant petition largely repurposes the Samsung IPR, which
respects the Board’s finite resources and allows it to complete any analysis it started
with the Samsung IPR. Regarding the seventh factor, there is no readily identifiable
roadblock for the Board to issue a final determination within the statutory one-year
limit.
XI. CONCLUSION
Petitioner requests institution of an IPR and cancellation of the Challenged
Claims.
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BY: /s/ Adam P. Seitz
Adam P. Seitz, Reg. No. 52,206
Paul R. Hart, Reg. No. 59,646
Jennifer C. Bailey, Reg. No. 52,583
COUNSEL FOR PETITIONER
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XII. MANDATORY NOTICES
A. Real Party-In Interest
Petitioner identifies the following real party-in-interest: Apple Inc.
B. Related Matters
Petitioner is not aware of any related matters that may affect, or may be
affected by, decisions in this proceeding.
C. Counsel and Service Information
Lead Counsel Back-Up Counsel

Adam P. Seitz (Reg. No. 52,206) Paul R. Hart (Reg. No. 59,646)
Adam.Seitz@eriseip.com Paul.Hart@eriseip.com
PTAB@eriseip.com
Postal and Hand-Delivery Address:
Postal and Hand-Delivery Address: ERISE IP, P.A.
ERISE IP, P.A. 5299 DTC Blvd., Ste. 1340
7015 College Blvd., Ste. 700 Greenwood Village, CO 80111
Overland Park, Kansas 66211 Telephone: (913) 777-5600
Telephone: (913) 777-5600 Fax: (913) 777-5601
Fax: (913) 777-5601
Jennifer C. Bailey (Reg. No. 52,583)
Jennifer.Bailey@eriseip.com
Postal and Hand-Delivery Address:

ERISE IP, P.A.
7015 College Blvd., Ste. 700
Overland Park, Kansas 66211
Telephone: (913) 777-5600
Fax: (913) 777-5601
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D. 37 C.F.R. § 42.8(b)(4): Service Information
Petitioner concurrently submits a Power of Attorney, 37 C.F.R. § 42.10(b),
and consents to electronic service directed to the email addresses of counsel listed
above and the following email address: PTAB@eriseip.com.
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CERTIFICATION OF WORD COUNT
The undersigned certifies pursuant to 37 C.F.R. §42.24 that the foregoing
Petition for Inter Partes Review, excluding any table of contents, mandatory notices
under 37 C.F.R. §42.8, certificates of service or word count, or appendix of exhibits,
contains 13,128 words according to the word-processing program used to prepare
this document (Microsoft Word).
Dated: January 19, 2022

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CERTIFICATE OF SERVICE ON PATENT OWNER

UNDER 37 C.F.R. § 42.105
Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105, the undersigned certifies that on
January 19, 2022, a complete and entire copy of this Petition for Inter Partes Review
including exhibits was provided via Federal Express to the Patent Owner by serving
the correspondence address of record for the ’600 Patent as listed on PAIR:
Coats & Bennett, PLLC

1400 Crescent Green, Suite 300
Cary NC 27518

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UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

Inter Partes Review Case No. IPR2022-00464

PETITION FOR INTER PARTES REVIEW

Petitioner Apple Inc. (“Apple” or “Petitioner”) requests inter partes review

(Ex. 1001, “the ’600 Patent”).

’600 Patent is applying the conventional codebook subset restriction technique in a

conventional technique of codebook subset restriction in a manner that is rank-

respectfully requests that the Challenged Claims be cancelled as invalid.

II. CERTIFICATION OF GROUNDS FOR STANDING

Challenged Claims on the grounds identified in this Petition.

Petitioner challenges the patentability of the Challenged Claims of the ’600

Patent and requests that they be canceled.

Petitioner’s challenge is based on the following prior art references:

• Novlan (Ex.1005) - U.S. Patent Application Publication No. 2014/0016549

and is prior art under post-AIA 35 U.S.C. §§ 102(a)(1)–(2).

• 36.213 (Ex. 1006) - “Evolved Universal Terrestrial Radio Access (E-UTRA);

Physical Layer Procedures,” 3GPP TS 36.213, Version 12.3.0 (Release 12).

art under post-AIA 35 U.S.C. § 102(a)(1).

Petitioner requests cancellation of the Challenged Claims as unpatentable

Ground Basis Challenged Claims References

1 103 1-28 Novlan, or

In a 4G LTE wireless communication network, a base station (which may be

also called “User Equipment” or “UE”) communicate via signals transmitted

See Ex. 1005 at Fig. 4; Ex. 1003 ¶36.

The 4G LTE standard provides a technique known in the art as “precoding,”

at the UE in a particular direction. See, e.g., Ex. 1001 at 1:25–26.

antenna signals upwards (green arrow); by contrast, when the UE is at a low

its antenna signal downwards (blue arrow):

in the following diagram:

Ex. 1003 ¶39.

In 4G LTE, a base station is not limited to a single antenna beam aimed at a

building (dashed green arrow):

tallest building in the city—still applies. See id.

The “precoding” technique referenced above that forms an antenna’s beams

in a particular desired direction (“beamforming”) involves a particular operation.

(represented by variable W(1)) can be represented by the following matrix:

See id. ¶77. In another example, a precoder can be represented by:

using that component) is a function of the angle (associated with 𝜃𝐶 in the

determination by assessing the channel quality associated with different beams

Ex. 1003 ¶47.

To help the UE with this task, 4G LTE provides a technique known as

task is much simpler. See, e.g., id. at 2:24–28.

However, indicating on an individualized basis each precoder matrix that is

would need to send an indication of whether a precoder matrix is restricted or

precoder matrices, and instead collectively restricts groups of precoder matrices at

The prior-art technique of joint codebook subset restriction achieves this

could be restricted by reference to their membership in the restricted group. Ex.

V. THE ’600 PATENT

’600 Patent is directed to wireless communication systems and, in particular,

1, 8, 15, and 22.

B. Summary of the Specification

protocols for interoperability for 4G wireless communications. See Ex. 1001 at

2:29–54 (discussing the purported problems associated with LTE Technical

Specification 36.331). The ’600 Patent begins by recognizing that codebook-based

communications standards.”). The ’600 Patent further recognizes that codebook

a codebook subset restriction in the conventional way….”). And, as the Examiner

codebook subset restriction signaling).

restriction signaling: “[r]estriction of precoders with certain angular pointing

angles (80º, 100º) in, for example, Figure 7:

have the component b0 in the first row and first column:

rank-1 and rank-2. See id. at 17:9–19:

In some embodiments, signaling that jointly restricts a

already known in the prior art.