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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. IPR2022-00465


U.S. Patent No. 8,731,124

PETITION FOR INTER PARTES REVIEW


OF U.S. PATENT NO. 8,731,124
TABLE OF CONTENTS

I. INTRODUCTION ........................................................................................ 1
II. OVERVIEW OF THE TECHNOLOGY .................................................... 1
A. TELECOMMUNICATIONS SYSTEMS AND STANDARDS..................................... 1
B. UPLINK REFERENCE SIGNALS ...................................................................... 3
C. GENERATING UPLINK REFERENCE SIGNALS ................................................. 5
III. THE ’124 PATENT ...................................................................................... 9
A. SUMMARY OF THE ALLEGED INVENTION ...................................................... 9
B. SUMMARY OF THE PROSECUTION HISTORY .................................................12
C. PERSON OF ORDINARY SKILL IN THE ART ...................................................13
IV. OVERVIEW OF THE PRIOR ART .........................................................13
A. OVERVIEW OF 36.211 .................................................................................13
B. OVERVIEW OF CATT ..................................................................................15
V. REQUIREMENTS FOR INTER PARTES REVIEW UNDER §42.104 .17
A. GROUNDS FOR STANDING ...........................................................................17
B. RELIEF REQUESTED ....................................................................................17
C. CLAIM CONSTRUCTION...............................................................................18
VI. SPECIFIC GROUND FOR PETITION ....................................................18
A. GROUND I: CLAIMS 1–5 AND 7–11 ARE RENDERED OBVIOUS BY 36.211 IN
VIEW OF CATT ...................................................................................................18

VII. DISCRETIONARY FACTORS .................................................................49


A. INSTITUTION SHOULD NOT BE DENIED UNDER §325(D) ..............................49
VIII. CONCLUSION........................................................................................51
IX. MANDATORY NOTICES .........................................................................52

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I. INTRODUCTION

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

(“IPR”) of claims 1–5 and 7–11 (the “Challenged Claims”) of U.S. Patent No.

8,731,124 (Ex. 1001, “the ’124 Patent”).

II. OVERVIEW OF THE TECHNOLOGY

A. Telecommunications Systems and Standards

A telecommunication system such as a cellular telephone network consists of

two high-level components: user equipment (UE) and infrastructure equipment. A

UE is typically a mobile device not attached to the communications network by

wires. Examples of UEs include mobile phones and laptop computers. Ex. 1003, ¶30.

Infrastructure equipment refers to equipment that cellular carriers (e.g.,

AT&T, Verizon) use to provide services. See id. Base stations are a type of

infrastructure equipment representing the “point of entry” of each UE into the

network—base stations wirelessly communicate with UEs and allow them to access

the network. Id., ¶31.

As shown below by CATT, a 3GPP technical document, geographic areas are

divided into “cells,” each including a base station (Cell1 – Cell3) that provides

communications services to UEs (UE1 – UE5) within the cell.

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Ex. 1009, Fig. 1; Ex. 1003, ¶32. A set of industry standards governs the

communication between UEs and base stations. See id., ¶¶33–34. These standards

include rules governing how a base station allocates resources to a UE and informs

the UE of this information. See id.

As technology has progressed, different generations of standards have

stratified. Currently, fifth generation (5G) technology is being developed. The 3rd

Generation Partnerships Project (3GPP) is an international organization that

develops Technical Specifications (TSs)—technical documents describing specific

aspects of a standard. Ex. 1005, ¶¶23–26. TSs are written by Technical Specification

Groups (TSGs), comprising several Working Groups (WGs). Id., ¶¶27–28. For

instance, the prior art TS identified herein, 36.211, was developed by Radio Access

Network WG1 and relates to aspects of E-UTRA.1

1
E-UTRA refers to Evolved Universal Terrestrial Radio Access, one aspect of the

LTE standard. LTE stands for Long Term Evolution (also referred to as 4G).

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B. Uplink Reference Signals

Uplink reference signals are signals that are transmitted in the uplink (i.e.,

from a UE), to be used by the receiver (i.e., a base station) as a “reference” for

something. Ex. 1003, ¶37. At least two types of uplink reference signals are used in

the art: (1) a Demodulation Reference Signal (DMRS) and (2) a Sounding Reference

Signal (SRS). See, e.g., Ex. 1001, 1:59–66; Ex. 1008, §§5.5.2, 5.5.3.

A DMRS is used in conjunction with transmitted data, including control

information (generally “information”), which is sent to a base station by a UE in a

modulated waveform. Ex. 1003, ¶38. This “information” is unknown to the base

station until it is transmitted by the UE and successfully received by the base station.

Id. In contrast, the DMRS is defined (e.g., as a sequence of numbers) before the

transmission of information and is therefore “known” to the base station before the

UE transmission is received. Id. The use of a DMRS allows the receiving base station

to demodulate the received waveform more accurately, thereby improving accuracy

of extracting the underlying information. Id., ¶¶38–45. This is accomplished in four

steps:

1. The base station knows the agreed-upon reference signal, which is the ideal
reference signal (i.e., the reference signal without distortion).

2. The base station receives the reference signal actually transmitted by the
UE (i.e., a channel-distorted version). The base station also receives the
signals carrying information (i.e., data) sent by the UE.

3. By comparing the received reference signal to its “ideal” version, the base
station determines the distortion to the signal caused by the channel.

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4. By determining this distortion, the base station attempts to compensate for
the distortion in the received information signals, which the base station
assumes have undergone similar distortion.

See id., ¶¶39–42.

As a simplified example, if a UE attempts to convey the value of an integer

(e.g., 1, 2, 5, 23, 117, etc.) to a base station over a noisy channel, the noise may add

a random number to the transmitted value and, consequently, the base station instead

received a value, e.g., “88.2.” See id., ¶43. Because 88.2 is not an integer, there is

low likelihood that the value “88.2” is correct. See id. In the absence of a reference

signal, the base station will be unable to determine the intended integer. Id. If the

base station and the UE agreed upon a reference signal—for instance, the sequence

“10, 20, 30”— the UE would also transmit this reference signal to the base station.

See id., ¶44. Continuing with the example, the base station expects to receive the

reference signal sequence “10, 20, 30,” but might actually receive “50.2, 59.6, 71.0”

instead. See id. In this case, the base station identifies that values of the reference

signal sequence have been shifted by 40.2, 39.6, and 41.0, respectively. See id. The

base station may then estimate that the distortion is approximately 40.3 by taking the

mean of these three “distortion” values. See id. Thus, applying the estimated

distortion of 40.3 to the received 88.2, the receiver deduces that the transmitted

information was most likely 48, by subtracting 40.3 from 88.2, and rounding to the

nearest integer. See id. Statistically, this is a more accurate estimation of the correct

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information than would be possible without using the reference signal. See id., ¶45.

As the ’124 patent acknowledges, such schemes were known in the prior art. See,

e.g., Ex. 1001 1:50-64; see also Ex. 1008, §§5.5.2.1, 5.5.2.2.

Sounding Reference Signals are similarly known to the base station ahead of

time, but are not necessarily transmitted in conjunction with any information. See

Ex. 1003, ¶46. Rather, they allow the receiving base station to ascertain the current

quality of uplink channels and use that information for intelligent scheduling. See

id. In other words, if the base station knows that a certain channel is currently

relatively noise-free while a different one is relatively noisy, the base station can

allocate uplink transmission resources in a more efficient way. See id. As is the case

with DMRS, the ’124 patent admits that such schemes were known. See, e.g., Ex.

1001 1:65-2:2; see also Ex. 1008, §5.5.3.

C. Generating Uplink Reference Signals

Before transmitting uplink reference signals, these signals must be generated.

As noted above, reference signals are a numerical sequence. As the ’124 patent

admits, these reference signal sequences generally appear as if they have been

randomly generated. See Ex. 1001, 1:26-28. However, because the reference signal

is known to both the transmitting UE and the receiving base station, the sequence is

technically not random. Accordingly, this concept is referred to as “pseudo-

randomness.” See, Ex. 1003, ¶47. Aside from being known to both UE and base

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station, a pseudo-random reference signal has all the properties that a truly random

sequence would have. See id.

Within a cell (or even across different cells), reference signals from different

UEs may interfere with each other, causing disruptions to the process described

above. See id., ¶48. Thus, it is desirable that different UEs not only use different

sequences, but also orthogonal (or semi-orthogonal) sequences as reference signals.

See id. Orthogonality is a property of sequences that indicates how dissimilar two

(or more) sequences are. See id. Sequences are orthogonal if their “dot product” is

0, meaning the sum of the products of respective terms is 0. Sequences are semi-

orthogonal if this sum is close to 0, but not exactly 0. For instance, the sequences

[+1 –1 –1 +1] and [+1 –1 +1 –1] are orthogonal—multiplying their respective terms

yields +1, +1, –1, and –1, which sum to 0. See id. Orthogonal sequences are

advantageous because they have zero cross-correlation and can coexist without

interfering with each other. See id., ¶49. Effectively, orthogonal sequences are

“invisible” to each other, and cause no interference to each other. See id. As a result,

several users can simultaneously use the same bandwidth without interfering with

one another as long as they use a set of mutually orthogonal signals. See id. Thus,

not only is it advantageous for there to be a large number of potential sequences to

pick from, it is also advantageous for these potential sequences to be as close to

orthogonal as possible (ideally orthogonal). See id. Various methods of picking

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sequences and the advantages of orthogonal sequences were known before the ’124

patent, as the ’124 patent admits. See, e.g., Ex. 1001, 2:3-3:36; see also Ex. 1008,

§5.5.1.

A pseudo-random reference signal2 can be generated using specific algorithms

or formulas, known as pseudo-random sequence generators. Ex. 1003, ¶50; see also

Ex. 1008, §§5.5.2, 5.5.3, 7.2. One such method is to define the sequence using a

recursive definition, built from a starting point called a “seed.” See Ex. 1003, ¶50.

By using different starting points—i.e., different “initialization sequences”—

different pseudo-random sequences can be generated. See id., ¶¶50–52. In other

words, different initialization sequences are used as a starting point for generating a

reference signal. For instance, 36.211 explains the process of building a pseudo-

random sequence—which is used in defining a reference signal—as shown below:

2
In general, pseudo-randomness can be manifested by the sequence of elements in

a given sequence itself and/or in the random sequence of an index of a selected

sequence of a set of available sequences. Ex. 1003, ¶47.

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Ex. 1008, §7.2. As shown above, a pseudo-random sequence 𝑐(𝑛) of some length

MPN can be generated by adding (modulo 2) corresponding terms of two other

sequences—𝑥1 and 𝑥2. Ex. 1003, ¶52; Ex. 1008, §7.2. Each of these sequences is

recursively defined (with proper initialization), wherein the initialization and the

recursive formula are specific to each sequence 𝑥1 and 𝑥2. Ex. 1003, ¶52; Ex. 1008,

§7.2.

Sequence 𝑥1 is initialized by defining the first 31 terms: the zeroth member

𝑥1(0) is set to 1, while the next 30 members are set to 0. Ex. 1003, ¶52; Ex. 1008,

§7.2. Similarly, sequence 𝑥2 is initialized by defining the first 31 terms which are

pegged to a 31-bit initialization sequence cinit. Ex. 1003, ¶52; Ex. 1008, §7.2. For

example, if cinit = 142, it would be represented as the following 31-bit binary number:

0000000000000000000000010001110

The 31-bit “seed” for 𝑥2 would therefore be:

X2(0) = 0

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X2(1) = 1

X2(2) = 1

X2(3) = 1

X2(4) = 0

X2(5) = 0

X2(6) = 0

X2(7) = 1

x2(8) = x2(9) = . . . x2(30) = 0

Ex. 1003, ¶52; Ex. 1008, §7.2. As shown above, by using different initialization

sequences (i.e., different values of cinit), a large number of pseudo-random sequences

can be derived—theoretically up to 231. Ex. 1003, ¶52.

III. THE ’124 PATENT

The ’124 Patent issued on May 20, 2014, from U.S. Application No.

13/468,855, filed on May 10, 2012. The ’124 Patent claims priority to Provisional

Application No. 61/616,866, filed March 28, 2012. For purposes of this proceeding,

Petitioner has applied March 28, 2012—the earliest of the claimed priority filings—

as the invention date.

A. Summary of the Alleged Invention

The ’124 specification discusses the same information described above in

Section II, which was known to a POSITA at the time of the alleged invention as

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described in technical specifications related to LTE. See supra, §II; Ex. 1003, ¶55.

For instance, the specification explains that a wireless device or UE transmits uplink

reference signals to a base station which are generated using a pseudo-random

sequence generator. Ex. 1001, 1:22–27, 5:61–6:12. The specification then indicates

that, with respect to coordinated multipoint processing (CoMP) techniques,

reference signals from different UEs with the same cell or in different cells may

interfere with one another. Id., 2:3–5. To this end, the ’124 specification notes that

“[t]he design principle of LTE assumes orthogonal RS [reference signals] within

each cell and semi-orthogonal RS among different cells.” Id., 2:9–10.

The ’124 specification then describes two types of sequences: those that are

“encoded” using “two or more parameters,” and those that are encoded using “a

single parameter” that “comprises only 9 or 10 bits in some embodiments, which is

significantly fewer bits than the 31 bits required to signal the…sequence itself[.]”

See id., 3:62–4:38. The ’124 specification recognizes that the “sequence” of 31 bits

is an “initialization sequence,” as explained above in Section II.C. See id., 7:51– 59,

Fig. 3. The ’124 specification also acknowledges that in prior art systems, such

initialization sequences can be defined using two parameters, according to the

equation cinit = 32𝑥 + 𝑦. See id., 12:20–23. Specifically, in citing to prior art LTE

systems, the ’124 specification notes that the initialization sequence is derived from

an equation of two parameters:

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5677
𝑁34 @A?BC
𝑐-.-/ =1 : 2< + 𝑓??
30

Id., 12:40; see also Ex. 1008, §5.5.1.4. According to the ’124 specification, the above

formula involves two parameters, 𝑥 and 𝑦, where:

5677
𝑁34 @A?BC
𝜒 = 1 : 𝑎𝑛𝑑 𝑦 = 𝑓??
30

Ex. 1001, 12:60.

In contrast to these prior art teachings that involved two parameters, 𝑥 and 𝑦,

the ’124 specification purports to have developed a new formula to generate an

initialization sequence using a single parameter, 𝑧. The ’124 patent states that in

some embodiments, z is defined using the “least significant bits from” a 31-bit

initialization sequence. Id., 8:6–10, 9:1–7. In other embodiments, possible values for

z are “mapp[ed]” on a one-to-one basis with possible initialization sequences

“according to a predefined formula.” Id., 9:20–67. In this case, the ’124 patent states

that the initialization sequence is defined according to the following formula:

𝑧
𝑐-.-/ = 𝑧 + 2 H I
30

Id., 11:30.

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B. Summary of the Prosecution History

During prosecution of the ’124 patent, the Examiner rejected nearly all then

pending claims as unpatentable in view of U.S. 2013/0039387 (“Qu”), either alone

or in combination with U.S. 2013/0121266 (“Ko”). Ex. 1002, 82–91. The only claim

not rejected was then-pending dependent claim 17, whose additional limitation

recited “wherein said deriving comprises deriving the initialization sequence cinit

according to

J
𝑐-.-/ = 𝑧 + 2 H I,
KL

“wherein z is the single parameter and ⌊𝑥⌋ denotes a floor function that rounds x to

the nearest integer less than or equal to x.” Id., 174. The Examiner found that this

claim would be allowable if combined with the base claim and written in

independent form. Id., 90.

After the Examiner’s rejection, the Applicant canceled all then-pending

claims except for two independent claims that eventually issued as Challenged

Claims 1 and 7. Id., 55–58. The Applicant amended these two independent claims

to include the limitations of then-pending claim 17, including the formula quoted

above. Id. The Applicant also submitted 10 dependent claims depending on these

two revised independent claims. Id. Based on these revisions made by the Applicant

(i.e., adding the above quoted formula to the independent claims), the Examiner

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allowed the claims. Id., 29. As shown below, however, the above quoted formula

was obvious in view of the prior art.

C. Person of Ordinary Skill in the Art

For the reasons described in the Declaration of Dr. Kakaes, a POSITA at the

time of the ’124 Patent would have had a Master’s degree in Electrical Engineering,

Applied Mathematics, Computer Science, Physics, or an equivalent field and three

to five years of experience working with wireless digital communication systems,

including the communication layers of such systems. Additional education might

compensate for less experience, and vice-versa. Ex. 1003, ¶¶63–68.

IV. OVERVIEW OF THE PRIOR ART

A. Overview of 36.211

36.211 was published December 12, 2011 and is therefore prior art to the ’124

Patent under pre-AIA 35 U.S.C. §102(a).3 36.211 was cited on the face of the ’124

Patent and cited by the examiner, but was not substantively discussed by the

examiner during prosecution.

36.211 is a 3GPP technical specification document describing technical

features related to physical channels and modulation of LTE networks (“E-UTRA”).

Ex. 1008, Title. 36.211 teaches sending, as an uplink transmission, a “[r]eference

3
Based on the claimed priority date of the ’124 patent, Pre-AIA versions of §102(a)

and §103 apply.

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signal” which is used by the physical layer but does not carry “information

originating from higher layers” (i.e., data or control). See id., §5.1.2. 36.211 explains

that there are at least two types of uplink reference signals: demodulation reference

signals (DMRS) and sounding reference signals (SRS). See id., §§5.5.2, 5.5.3.

36.211 explains that the pseudo-random sequence generator underlying reference

signals is initialized using a 31-bit cinit value. See id., §7.2.

36.211 teaches that, in certain scenarios, cinit is a function of a single

5677
parameter—physical cell ID, 𝑁34 . As a starting point, 36.211 proposed the

following formula for cinit:

5677
𝑁34
𝑐-.-/ = 1 : ∙ 2< + 𝑓PP@A?BC
30

Ex. 1008, §5.5.2.1.1. To be sure, 𝑐-.-/ in the above equation appears to derive from

5677
two distinct parameters—𝑁34 and 𝑓PP@A?BC . But 36.211 teaches that sequence shift

pattern 𝑓PP@A?BC is itself a function of 𝑁34


5677
and ∆PP :

@A?BC
𝑓?? = (𝑓PP@ABBC + ∆PP )𝑚𝑜𝑑 30

@ABBC 5677
𝑓?? = 𝑁34 𝑚𝑜𝑑 30

Id., §5.5.1.3. 36.211 also teaches that ∆PP is an integer between 0 and 29, inclusive.

Id. Thus, when ∆PP = 0, cinit is given by the following equation, which determines cinit

5677
as a function of a single parameter—physical cell ID, 𝑁34 :

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5677
𝑁34
𝑐-.-/ = 1 : ∙ 2< + 𝑁34
5677
𝑚𝑜𝑑 30
30

See Ex. 1003, ¶69.

Because 36.211, like the ’124 Patent, relates to generating uplink reference

signals, 36.211 is in the same field of endeavor as the ’124 Patent. Compare Ex.

1008, §5.1.2, with ’124 Patent, 1:14-16. Accordingly, 36.211 is analogous art to the

’124 Patent. Ex. 1003, ¶70.

B. Overview of CATT

CATT was published January 31, 2012 and is therefore prior art to the ’124

Patent under pre-AIA 35 U.S.C. §102(a). CATT was not cited on the face of the ’124

Patent or considered by the examiner.

CATT is a 3GPP technical document (“T-doc”) that proposes several

improvements to uplink reference signaling. See, e.g., Ex. 1009, 1 (“To obtain the

CoMP gain in uplink, some enhancements on UL RS seem necessary to increase the

scheduling flexibility.”). Specifically, CATT recognized that cell-specific DMRS

sequences raised challenges to creating orthogonal reference signal sequences

“among different cells.” Id. To this end, CATT proposed creating “UE-specific

DMRS sequence[s]” which were understood to provide “better orthogonality.” Id.

Hence, CATT proposed using “a virtual cell ID” instead of the “current serving cell

ID” to generate a specific sequence-shift pattern 𝑓PP . Id. As CATT teaches, using the

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same virtual cell ID for a mobile device (instead of multiple cell IDs belonging to

different cells) means that “UEs from different cells can be configured with the same

base sequence to obtain orthogonal DMRS sequence.”4 Id. Moreover, when a virtual

ID is used, CATT teaches that “∆PP is not needed, which should be set to 0 or

removed.” Id.

As discussed in the preceding section, removing ∆PP from the sequence-shift

pattern taught by 36.211 yields the following single-variable formula for cinit:

5677
𝑁34
𝑐-.-/ = 1 : ∙ 2< + 𝑁34
5677
𝑚𝑜𝑑 30
30

See id.; Ex. 1008 §§5.5.1.3, 5.5.2.1.1; Ex. 1003, ¶71.

Because CATT, like the ’124 Patent, relates to generating uplink reference

signals, 36.211 is in the same field of endeavor as the ’124 Patent. Compare Ex.

1009, 1, with ’124 Patent, 1:14-16. Similarly, CATT is related to uplink reference

signaling. See id., 1. CATT is therefore in the same field of endeavor as the ’124

Patent. Ex. 1003., ¶72. CATT is also reasonably pertinent to the problem addressed

by the ’124—both CATT and the ’124 Patent seek to achieve inter-cell orthogonality.

Compare CATT, 1, 2, with ’124 Patent, 13:46-51. Accordingly, CATT is analogous

art to the ’124 Patent. Id. at ¶72.

4
Unless otherwise noted, all emphasis is added by Petitioner.

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V. REQUIREMENTS FOR INTER PARTES REVIEW UNDER §42.104

Petitioner challenges the patentability of the Challenged Claims of the ’124

Patent and requests that they be canceled.

A. Grounds for Standing

Petitioner certifies pursuant to Rule 42.104(a) that the ’124 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. Petitioner certifies: (1)

Petitioner is not the owner of the ’124 patent; (2) Apple (or any real party-in-interest)

has not filed a civil action challenging the validity of any claim of the ’124 patent;

(3) Petitioner has not been served with a complaint asserting infringement of the

’124 patent; (4) estoppel provisions of 35 U.S.C. §315(e)(1) do not prohibit this IPR;

and (5) this Petition is filed after the ’124 patent was granted.

B. Relief Requested

Petitioner requests cancellation of the Challenged Claims as unpatentable

under pre-AIA 35 U.S.C. §103. The specific ground of the challenge is set forth

below, and are is supported by the declaration of Dr. Apostolos K. Kakaes (Ex.

1003).

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Ground Claims Proposed Statutory Rejection
1 1-5, 7-11 Obvious under §103 in view of 36.211—“Evolved
Universal Terrestrial Radio Access (EUTRA);
Physical Channels and Modulation,” 3GPP TS
36.211, Version 10.4.0 (Release 10) (Ex. 1008)
and R1-120106—“Further Details on UE-Specific
UL DMRS” 3GPP TSG RAN WG1 Meeting #68,
R1-120106, submitted by CATT (“CATT”) (Ex.
1009).

C. Claim Construction

Terms in an IPR should be construed in accordance with the principles set

forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R.

§42.104(b)(3). “[W]ords of a claim ‘are generally given their ordinary and

customary meaning,’” which is “the meaning that the term would have to a person

of ordinary skill in the art in question at the time of the invention, i.e., as of the

effective filing date of the patent application.” Phillips, 415 F.3d at 1312–13.

Petitioner does not believe that any terms need be construed to resolve the arguments

presented herein.

VI. SPECIFIC GROUND FOR PETITION

A. Ground I: Claims 1–5 and 7–11 Are Rendered Obvious by 36.211


in view of CATT

1. Motivation to Combine 36.211 and CATT

A POSITA would have been motivated to combine the disclosures of 36.211

and CATT, which would have involved routine implementation with no technical

difficulties given their complementary teachings. Ex. 1003, ¶¶74–78. Specifically,

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and as described below in Section VI.A.2.b, a POSITA would have been motivated

to implement CATT’s virtual cell ID in place of the physical cell ID as taught by

36.211. Ex. 1003, ¶74. This simple substitution would have successfully achieved

the predictable benefits of enhancing orthogonality of the reference signals within a

cell and across different cells, reducing interference and increasing scheduling

flexibility. See Ex. 1009, 1. Thus, this combination combines prior art elements

according to known methods to achieve predictable results, with a reasonable

expectation of success.

A POSITA would have also understood for several reasons that CATT’s

teachings fit squarely atop those of 36.211. First, a POSITA would have read CATT

together with 36.211. CATT was submitted to TSG RAN WG1—the same working

group within the TSG (Radio Access Network Working Group 1) that developed

36.211. See Ex. 1008, Annex A; Ex. 1009, 1. Moreover, CATT was presented at the

February 6, 2012 TSG RAN WG1 (“RAN Working Group 1”) meeting where

several Series 36 TSs were discussed. See Ex. 1009, 1. CATT also discusses specific

technical features found in 36.211 including “UE,” “cell,” “UL [uplink],” “DMRS

[demodulation reference signal],” “reference signal,” “base sequence,” “CS [cycle

shift],” “CS hopping pattern 𝑛@X (𝑛P ),” “sequence-shift,” “cell ID,” “initialization

value,” “∆PP ,” and the specific initialization formula:

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5677
𝑁34 @A?BC
𝑐-.-/ = 1 : ∙ 2< + 𝑓??
30

See generally Exs. 1008, 1009. Accordingly, a POSITA would have understood that

CATT discusses the same specific technological features presented in 36.211, and

would have been motivated to combine their teachings. Ex. 1003, ¶75.

Second, CATT provides an express reason to use its virtual cell ID in the

formulas of 36.211. Specifically, CATT notes that using a “cell-specific DMRS

sequence makes it hard to obtain the orthogonal RS sequence among different cells.”

Ex. 1009, 1. As explained above in Section II.C, and as admitted by the ’124 patent,

this difficulty of maintaining orthogonality of reference signals leads to interference.

See, e.g., Ex. 1001, 2:6–8 (“In order to limit the level of interference between RSs,

different techniques have been introduced in different LTE releases in order to allow

orthogonal or semi-orthogonal RSs.”). To this end, CATT proposes using “a virtual

cell ID…to replace the current serving cell ID” in generating reference sequence

patterns. Ex. 1009, 1. Because virtual cell IDs are not unique to individual cells

(unlike physical cell IDs), “UEs from different cells can be configured with the same

base sequence to obtain orthogonal DMRS sequence via CS.” Id. As explained

further below in Section VI.A.2.b, a result of using a virtual cell ID is that a particular

term used to generate the reference signal, ∆PP , “is not needed” and “should be set

to 0 or removed.” Id.

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CATT describes numerous advantages conferred by using virtual cell IDs. For

instance, this teaching creates “UE-specific DMRS sequence(s)” for “better

orthogonality.” Ex. 1009, 1. CATT further notes that UE-specific uplink DMRS

sequences “can reduce the interference among UEs in the cooperative area,” can

“improve the detection performance via joint receiving in multiple points,” and can

“increase the scheduling flexibility.” Id. Moreover, across multiple cells, “the

sequence-shift pattern and the initialization value of group/sequence hopping can be

generated from the same ID.” Id. Accordingly, a POSITA would have been

motivated to combine CATT with 36.211 to obtain device-specific (rather than cell

specific) reference signals. See Ex. 1003, ¶¶76–77.

For the same reasons, applying CATT’s teachings to 36.211 represents

applying a known technique and/or known prior art elements (virtual cell IDs) to a

known method ready for improvement (DMRS procedures described by 36.211) to

yield the predictable result of increased orthogonality and performance. See id. A

POSITA would have had a reasonable expectation of success in combining these

references. CATT discloses specific benefits of its proposal, including device-

specific reference signals, reduced interference, improved detection performance,

and better orthogonality. See id., ¶78.

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2. Independent Claim 1

a) Preamble: “A method implemented by a wireless device


for initializing a pseudorandom sequence generator on
which to base generation of an uplink reference signal,
comprising:”5

36.211 discloses the preamble. As explained above, 36.211 teaches various

methods and protocols related to wireless communications and devices. See supra,

§II. In particular, 36.211 discloses various aspects of uplink transmissions, including

the generation of uplink reference signals (e.g., DMRS and SRS sequences). See Ex.

1008, §5.1.2 (“The following uplink physical signals are defined: Reference

signal”); see also id., §§5 (“Uplink”), 5.5.2.1.1 (“Reference Signal Sequence”).

Relevant here, 36.211 teaches the generation of a PUSCH (Physical Uplink

(Z)
Shared Channel) demodulation reference signal (DMRS) sequence 𝑟@A?BC given by:

(Z) \? (a )
𝑟@A?BC (𝑚 ∙ 𝑀P5 + 𝑛) = 𝑤 (Z) (𝑚)𝑟^,`b (𝑛)

See 1008, §5.5.2.1.1. In the above equation, 𝛼Z (the cyclic shift) in turn depends on

“the pseudorandom sequence c(i)” which is initialized as follows:

5677
𝑁34
𝑐-.-/ = 1 : ∙ 2< + 𝑓PP@A?BC
30

5
For both independent claims of the ‘124 patent, Petitioner does not concede that the

preambles are necessarily limiting for the purposes of this proceeding.

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5677
where 𝑁34 is the “[p]hysical layer cell identity” and 𝑓PP@A?BC is the sequence shift

pattern for PUSCH. Id. §§3.1, 5.5.2.1.1; see Ex. 1003, ¶¶79–81. As explained in

Section II.C below, an uplink reference signal is generated based on the initialization

of the pseudorandom sequence generator. Accordingly, a POSITA would have

understood that 36.211 discloses methods for initializing a pseudorandom sequence

generator and wireless devices implementing those methods. Ex. 1003, ¶79.

b) Element [1.1]: “selectively deriving one of the


initialization sequences within a subset of possible
initialization sequences for the sequence generator,
according to one or more rules that define different
initialization sequences in the subset as a function of a
single parameter, where the single parameter is received
from a base station,”

36.211, in view of CATT, renders this element obvious. First, 36.211 teaches

deriving one initialization sequence from a range of possible initialization sequences

according to one or more rules that define different initialization sequences in the

subset as a function of a single parameter. Specifically, 36.211 discloses the

initialization of the pseudo random sequence generator 𝑐(𝑖) is given as follows:

5677
𝑁34
𝑐-.-/ = 1 : ∙ 2< + 𝑓PP@A?BC
30

Ex. 1008, §5.5.2.1.1. 36.211 teaches that 𝑓PP@A?BC (the sequence shift pattern for

PUSCH, the Physical Uplink Shared Channel) is given as follows:

𝑓PP@A?BC = (𝑓PP@ABBC + ∆PP )𝑚𝑜𝑑 30

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Id., §5.5.1.3. And 𝑓PP@ABBC (the sequence shift pattern for PUCCH, the Physical

Uplink Control Channel) is given by:

𝑓PP@ABBC = 𝑁34
5677
𝑚𝑜𝑑 30

Id. As further explained below, the above three equations—which comprise the

claimed “one or more rules that define different initialization sequences in the

5677 5677
subset”—are defined as functions of 𝑁34 . See id., §§3.1 (defining 𝑁34 as the

“[p]hysical layer cell identity”), 5.5.1.3, 5.5.2.1.1; Ex. 1003, ¶82. Thus, the subset of

possible initialization sequences is the range of possible values of the expression:

5677
𝑁34
𝑐-.-/ = 1 : ∙ 2< + 𝑓PP@A?BC
30

Ex. 1008, §5.5.1.3. The particular initialization sequence cinit (e.g., the selectively

derived one of the initialization sequences) is derived based on the value of

5677
parameter 𝑁34 (as shown in the equations below), which is the physical layer cell

identity. See Ex. 1003, ¶¶82–83.

Second, 36.211 teaches a specific scenario in which the set of rules for

deriving the initialization sequence (e.g., the above equations) are based on a “single

5677
parameter” (𝑁34 ) and no other parameters. Namely, as set forth below, 𝑐-.-/ is

based on a single parameter when ∆PP is set to zero—a scenario 36.211 expressly

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teaches. Combining the initialization sequence equations listed above demonstrates

this is the case. First, the base equation is:


5677
𝑁34
𝑐-.-/ = 1 : ∙ 2< + 𝑓PP@A?BC
30

Substituting the value of 𝑓PP@A?BC provided by 36.211, the equation is represented as

follows:

5677
𝑁34
𝑐-.-/ = 1 : ∙ 2< + (𝑓PP@ABBC + ∆PP )𝑚𝑜𝑑 30
30

Substituting the value of 𝑓PP@ABBC provided by 36.211, the equation is then

represented as follows:

5677
𝑁34
𝑐-.-/ = 1 : ∙ 2< + e𝑁34
5677
𝑚𝑜𝑑 30 + ∆PP f𝑚𝑜𝑑 30
30

A POSITA would have recognized that due to the properties of the modulus

function, the above equation can also be represented as follows (i.e., the above and

below equations are mathematically identical):

5677
𝑁34
𝑐-.-/ = 1 : ∙ 2< + e𝑁34
5677
+ ∆PP f𝑚𝑜𝑑 30
30

See id., §§5.5.2.1.1, 5.5.1.3; Ex. 1003, ¶83.

36.211 further teaches that ∆PP is an integer between 0 and 29, inclusive, and

“is configured by higher layers.” Id., §5.5.1.3. Thus, when ∆PP = 0, the initialization

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sequence equation reduces to the following, which defines 𝑐-.-/ based on the single

5677
parameter, 𝑁34 :

5677
𝑁34
𝑐-.-/ = 1 : ∙ 2< + 𝑁34
5677
𝑚𝑜𝑑 30
30

See id., §§5.5.2.1.1, 5.5.1.3; Ex. 1003 ¶¶82–83. In other words, 36.211 teaches a set

of rules that define different initialization sequences as a function only of the single

parameter, when ∆PP = 0. See id., ¶84.

To the extent that Patent Owner argues that 36.211 does not teach this

limitation because 𝛥PP may be non-zero in other scenarios, CATT specifically

teaches that ∆PP should be set to zero. CATT describes proposals for improving

coordinated multi-point (CoMP) transmissions, including specific improvements to

the uplink DMRS. Ex. 1009, 1. One of these improvements is using a “virtual cell

5677
ID” in place of the physical layer cell ID, 𝑁34 . Id. As CATT explains, “if the virtual

ID is applied to sequence-shift pattern, ∆PP is not needed, which should be set to 0

or removed.” Id. In other words, a POSITA using CATT’s teachings with 36.211

would know that ∆PP should be set to 0 (or, equivalently, simply removed), yielding

an initialization sequence defined by a single parameter, the virtual cell ID.

5677
Third, 36.211 teaches that 𝑁34 is “received from the base station.” 36.211

5677
teaches that 𝑁34 is the “[p]hysical layer cell identity,” which identifies the cell in

which the base station resides. See Ex. 1008, §§3.1, 6.7.4. 36.211 further teaches that

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there are “504 unique physical-layer cell identities” and that these cell identities are

signaled from the base station to UEs for synchronization. Id., §6.11

(“Synchronization Signals”); see also id., §§6.11.1 (“Primary Synchronization

Signal”), 6.11.2 (“Secondary Synchronization Signal”).

To the extent that Patent Owner incorrectly argues that 36.211 does not teach

that the physical cell identity is received from the base station, CATT teaches that

the virtual cell ID is “received from the base station.” CATT explains that “[t]he

indication of this virtual cell ID can be either semi-static or dynamic for each UE.”

Ex. 1009, 1. In fact, CATT teaches that “multiple alternative [virtual] IDs can be

signaled via higher layer and the expected ID can be selected.” Id., 2. Moreover,

CATT explains that “virtual cell ID signaled for UE specific base sequence as

mentioned above can be reused to obtain the initialization value of CS hopping

pattern.” Id. From these disclosures, a POSITA using CATT’s teachings with 36.211

would know the virtual cell ID is signaled from the base station to the UE. Ex. 1003,

¶85.

A POSITA would have been motivated to implement the proposal of CATT

into the equations of 36.211 for the reasons explained above in Section VI.A.1.

Additionally, CATT would have specifically motivated a POSITA to make this

substitution. For instance, CATT’s stated goal is “PUSCH DMRS enhancement”—

in other words, improvements beyond the physical uplink channel technology

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U.S. Patent No. 8,731,124
described in 36.211. See Ex. 1009, 1. Specifically, CATT explains that using a virtual

cell ID (thereby setting ∆PP = 0) allows for a UE-specific reference signal, rather than

a cell-specific reference signal. Id. This is important because, as CATT explains, a

“cell-specific DMRS sequence makes it hard to obtain the orthogonal RS [reference

signal] sequence among different cells,” while “UE-specific DMRS sequence[s]”

provide “better orthogonality.” Id. Orthogonality of a reference signal sequence is

desirable because it reduces interference across multiple mobile devices. See Ex.

1003, ¶¶74–78, 86. In this instance, CATT’s teachings would improve orthogonality

not merely within one cell, but across cells, as shown below:

Ex. 1009, Fig. 1. Thus, given the compatibility of the references and CATT’s express

teachings that using a virtual cell ID would improve orthogonality, a POSITA would

have been motivated to use a virtual cell ID (as taught by CATT) in 36.211’s method

with a reasonable likelihood of success. See Ex. 1003, ¶¶74–78, 86.

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c) Element [1.2]: “wherein said deriving comprises deriving
the initialization sequence based on a defined one-to-one
mapping of possible initialization sequences in the subset
to possible values for the single parameter,”

36.211, in view of CATT, renders this element obvious. As explained above,

36.211 teaches the following equation for deriving an initialization sequence:

5677
𝑁34
𝑐-.-/ = 1 : ∙ 2< + 𝑁34
5677
𝑚𝑜𝑑 30
30

See supra §VI.A.2.b (where ∆PP is set to zero). The above equation is the claimed

“defined one-to-one mapping of possible initialization sequences in the subset to

5677
possible values for the single parameter.” Namely, each value of 𝑁34 —integers

between 0 and 503 (see Ex. 1008, §6.11)—yields a different cinit value such that there

5677
is one 𝑁34 for every one cinit value.

This is likewise true in the proposed 36.211-CATT combination. As noted

above, a POSITA would have been motivated to utilize the virtual ID as the “single

parameter” as proposed by CATT. See supra §VI.A.2.b. Because CATT teaches that

a virtual cell ID can be introduced to replace the cell ID, each possible value of the

single parameter would also uniquely map onto a different initialization sequence.

See Ex. 1003, ¶¶89-90. A POSITA would have been motivated to use the virtual ID

of CATT in the method of 36.211 for the reasons described above in Sections VI.A.1

and VI.A.2.c.

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d) Element [1.3]: “wherein the range of the single parameter
is smaller than the range of the subset, and”

36.211 teaches that the range of the single parameter is smaller than the range

of the subset of possible initialization sequences. First, 36.211 teaches that the single

5677
parameter 𝑁34 , is a value between 0 and 503. See Ex. 1008, §6.11 (“There are 504

5677
unique physical-layer cell identities.”) Moreover, 36.211 teaches that 𝑁34 is

defined by the equation:

5677 (h) (i)


𝑁34 = 3𝑁34 + 𝑁34

(h) (i)
where 𝑁34 is an integer between 0 and 167 (inclusive) while 𝑁34 is either 0, 1, or

5677
2. See id. Thus, it is clear that the range of values of 𝑁34 is between 0 and 503. See

Ex. 1003, ¶92.

Second, as explained above, 36.211 teaches that the initialization sequence is

given by these equations:

5677
𝑁34
𝑐-.-/ = 1 : ∙ 2< + 𝑓PP@A?BC
30

@A?BC
𝑓?? = (𝑓PP@ABBC + ∆PP )𝑚𝑜𝑑 30

𝑓PP@ABBC = 𝑁34
5677
𝑚𝑜𝑑 30

Ex. 1008, §§5.5.1.3, 5.5.1.4, 5.5.2.1.1. And the combination of these equations yields

the following:

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5677
𝑁34
𝑐-.-/ = 1 : ∙ 2< + e𝑁34
5677
+ ∆PP f𝑚𝑜𝑑 30
30

See supra §VI.A.2.b.

In the above equation, a larger ∆PP corresponds to a larger 𝑐-.-/ and,

correspondingly, to a larger range of 𝑐-.-/ values. Even minimizing the range of 𝑐-.-/

values by setting ∆PP to zero, the range of the subset of initialization sequences

5677
(𝑐-.-/ ) is still greater than the range of the single parameter (𝑁34 ). For instance, if

5677
the single parameter (𝑁34 ) is 0, the initialization sequence (𝑐-.-/ ) is simply 0. See

Ex. 1003, ¶¶93–94. If the single parameter (𝑐-.-/ ) is its maximum value, 503, then

the initialization value (cinit) is:

503
𝑐-.-/ = j l ∙ 32 + (503 𝑚𝑜𝑑 30 + 0) 𝑚𝑜𝑑 30
30

which equals 535. See id., ¶94. Thus, the range of the single parameter (0 to 503) is

smaller than the range of the subset of initialization sequences (0 to 535). See id.

And as explained below with respect to claim 2, the single parameter can always be

identified as a nine-bit number because the single parameter is always smaller than

512. See id., ¶90; see infra §VI.A.3.

A POSITA would have understood that these teachings hold true in the

36.211-CATT combination. In other words, the range of the single parameter is

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smaller than the range of the subset of initialization sequences even when using a

virtual ID (as taught by CATT) as the single parameter. CATT teaches that the virtual

ID is the same length as the physical cell ID: “a virtual cell ID can be introduced to

replace the current serving cell ID.” See Ex. 1009, 1. Because the virtual cell ID

“replace[s]” the current serving cell ID—which can be represented by 9 bits—the

virtual cell ID is also 9 bits. In this case, the theoretical maximum value for the single

parameter is 511 (i.e., 29 – 1), which is still smaller than the maximum value for

initialization sequences (535). See Ex. 1003, ¶95. A POSITA would have been

motivated to use the virtual ID of CATT in the method of 36.211 for the reasons

described above in Sections VI.A.1 and VI.A.2.c.

e) Element [1.4]: “wherein said deriving comprises deriving


the initialization sequence cinit according to
J
𝑐-.-/ = 𝑧 + 2 H I,
KL
wherein z is the single parameter and ⌊𝒙⌋ denotes a floor
function that rounds x to the nearest integer less than or
equal to x;”

36.211 discloses this element. As explained above, 36.211 teaches that the

initialization sequence is given by the following equations:


5677
𝑁34
𝑐-.-/ = 1 : ∙ 2< + 𝑓PP@A?BC
30

𝑓PP@A?BC = (𝑓PP@ABBC + ∆PP )𝑚𝑜𝑑 30

𝑓PP@ABBC = 𝑁34
5677
𝑚𝑜𝑑 30

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Ex. 1008, §§5.5.1.3, 5.5.1.4, 5.5.2.1.1. In the first equation above, the floor function

⌊𝒙⌋ refers to the largest integer that is less than or equal to x (for positive values of

x). Ex. 1003, ¶81. In other words, ⌊𝒙⌋ denotes a floor function that rounds x to the

nearest integer less than or equal to x.

As further explained above, 36.211 teaches that ∆PP may be set to 0, and CATT

confirms that ∆PP “should be set to 0 or removed” when using a virtual ID. Id.; Ex.

1009, 1. Thus, the initialization sequence equation simplifies to the following:

5677
𝑁34
𝑐-.-/ = 1 : ∙ 2< + 𝑁34
5677
𝑚𝑜𝑑 30
30

As demonstrated by the proof below, a POSITA would have understood that this

equation taught by 36.211 is mathematically equivalent to the claimed equation,

thereby rendering it obvious. See Ex. 1003, ¶96.

5677
Substituting the variable 𝑧 for 𝑁34 (e.g., the single parameter as discussed in

Section VI.A.2.b), the 36.211 initialization sequence cinit can be written as follows:

𝑧
𝑐-.-/ = H I ∙ 2< + 𝑧 𝑚𝑜𝑑 30
30

Id., ¶98.

As demonstrated in the following discussion, the above equation is

mathematically identical to the claimed equation. As a starting point, a POSITA

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would have understood that according to the quotient remainder theorem, any non-

negative integer 𝑧 can be expressed by the following expression of integers:

𝑧 = 30𝑞 + 𝑟

In other words, when 𝑧 is divided by 30, 𝑞 is the integer portion of the quotient while

𝑟 is the remainder. Thus, 𝑞 is a non-negative integer and 𝑟 is an integer between 0

and 29, inclusive. See Ex. 1003, ¶97. For example, if 𝑧 = 304, then 𝑞 = 10 and 𝑟 = 4.

Accordingly, both of the following equations are generally true:

𝑧
𝑞 = H I
30

𝑟 = 𝑧 𝑚𝑜𝑑 30

Id.

Substituting the q and r values obtained with the quotient remainder theorem

J
(e.g., q = H I and 𝑟 = 𝑧 𝑚𝑜𝑑 30), cinit can be written as follows:
KL

𝑧
𝑐-.-/ = H I ∙ 2< + 𝑧 𝑚𝑜𝑑 3
30

= 𝑞 ∙ 2< + 𝑟

= 32𝑞 + 𝑟

= 30𝑞 + 2𝑞 + 𝑟

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= (30𝑞 + 𝑟) + 2𝑞

Id. Finally, substituting z, as defined according to the quotient remainder theorem

(e.g., z = 30q + r), cinit results in the following:

= 𝑧 + 2𝑞

𝒛
= 𝒛+𝟐H I
𝟑𝟎

Id. Here, the bolded expression is the claimed inventive formula. See id.

Accordingly, a POSITA would have recognized that when ∆PP is set to zero

(as permitted by 36.211 and mandated when 36.211 is modified pursuant to the

teachings of CATT), the 36.211 initialization sequence is the claimed formula. The

above mathematical proof demonstrates this is in fact the case. As detailed above,

applying well-established mathematical theorems demonstrates that the equations

are mathematically identical. Accordingly, the claimed equation is obvious in view

of 36.211’s teachings. See id., ¶99.

f) Element [1.5]: “generating the uplink reference signal


with the sequence generator initialized to the derived
initialization sequence; and”

36.211 teaches generating the uplink reference signal (the PUSCH

demodulated reference signal) with the sequence generator initialized to the derived

initialization sequence (cinit).

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As explained above in Section VI.A.2.a, 36.211 teaches that the PUSCH

(Z)
demodulation reference signal sequence, 𝑟@A?BC , is generated according to the

following equation:

(Z) (a )
\?
𝑟@A?BC (𝑚 ∙ 𝑀P5 + 𝑛) = 𝑤 (Z) (𝑚)𝑟^,`b (𝑛)

See Ex. 1008, §5.5.2.1.1. 36.211 further teaches that 𝛼Z in turn depends on “the

pseudo-random sequence 𝑐(𝑖),” which is initialized using the “derived initialization

sequence” as follows:

5677
𝑁34
𝑐-.-/ = 1 : ∙ 2< + 𝑓PP@A?BC
30

Id., §§3.1, 5.5.2.1.1; see Ex. 1003, ¶100.

g) Element [1.6]: “transmitting the generated signal.”

36.211 teaches that the generated signal (the demodulation reference signal)

is transmitted. See, e.g., Ex. 1008, §§5.5 (“Two types of uplink reference signals are

supported” including “[d]emodulation reference signal, associated with transmission

of PUSCH or PUCCH.”), 5.5.2.1 (describing transmission of the demodulation

reference signal for PUSCH), 5.5.2.2 (describing transmission of the demodulation

reference signal for PUCCH), 8.1 (describing timing of uplink communications); see

generally id., §§5, 5.1.2, 5.2.1. Moreover, 36.211 expressly teaches that a reference

signal is an “uplink physical signal [that] is used by the physical layer but does not

36
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U.S. Patent No. 8,731,124
carry information originating from higher layers.” Id., §5.1.2. This is correct, as

explained above in Section II.B—the reference signal does not “carry information”

but instead is transmitted alongside information for the receiving base station to use

in more accurately interpreting the received information. See Ex. 1003, ¶102.

3. Dependent Claim 2

a) Preamble: “The method of claim 1”

36.211 and CATT render the method of claim 1 obvious. See supra, §VI.A.2.

b) Element [2.1]: “wherein the single parameter comprises


9 or 10 bits, and the initialization sequence comprises 31
bits.”

36.211 discloses this element. As explained above in Section VI.A.2.d, 36.211

5677
teaches that the single parameter 𝑁34 , is a value between 0 and 503. See Ex. 1008,

§6.11 (“There are 504 unique physical-layer cell identities.”). Because the single

parameter is always smaller than 512, it can be identified as a nine-bit number. See

Ex. 1003, ¶104. Because 29 = 512, any of the 503 possible single parameter values

may be identified 9 bits. See id.

Moreover, as explained above in Section VI.A.2.d, using a virtual cell ID (as

taught by CATT) likewise satisfies this element. See also Ex. 1009, 1 (“[A] virtual

cell ID can be introduced to replace the current serving cell ID.”); Ex. 1003, ¶104.

A POSITA would have been motivated to use the virtual ID of CATT in the method

of 36.211 for the reasons described above in Sections VI.A.1 and VI.A.2.c.

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36.211 further teaches that the initialization sequence (cinit) comprises 31 bits.

Specifically, 36.211 teaches that “[p]seudo-random sequences are defined by a

length-31 Gold sequence,” as shown below:

Ex. 1008, §7.2. The pseudo-random sequence is defined as the sum of two other

sequences, 𝑥1 and 𝑥2. Id. In particular, 𝑥2 is initialized recursively based on the digits

of cinit according to the equation:


KL
𝑐-.-/ = s 𝑥i (𝑖) ∙ 2-
-tL

Id. For instance, if cinit = 142, its 31-bit binary representation would be:

0000000000000000000000010001110

In this case, 𝑥2(0) = 0 (the least-significant digit of 𝑐init), 𝑥2(1) = 1 (the next digit),

𝑥2(2) = 1 (the next digit), etc. See Ex. 1003, ¶106. Moreover, 𝑥2(8) through 𝑥2(30)

would all equal 0, because the binary representation of 142 contains a 0 in these

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positions. See id. Thus, no matter what the value of cinit is, 36.211 teaches that it

must always comprise 31 bits to initialize a pseudo-random sequence. See id.

4. Dependent Claim 3

a) Preamble: “The method of claim 1”

36.211 and CATT render the method of claim 1 obvious. See supra, §VI.A.2.

b) Element [3.1]: “wherein the range of the single parameter


spans between a minimum value of 0 and a maximum
value no greater than 541.”

36.211 discloses this element. As explained above in Section VI.A.2.d, 36.211

5677
teaches that the single parameter 𝑁34 , is a value between 0 and 503. See Ex. 1008,

§6.11 (“There are 504 unique physical-layer cell identities.”). Moreover, 36.211

5677
teaches that 𝑁34 is defined by the equation:

5677 (h) (i)


𝑁34 = 3𝑁34 + 𝑁34

(h) (i)
where 𝑁34 is a number between 0 and 167 while 𝑁34 is between 0 and 2. See id.

5677
Thus, it is clear that the range of 𝑁34 is between 0 and 503, which is a value between

a minimum value of 0 and a maximum value no greater than 541. See Ex. 1003,

¶108.

Moreover, as explained above in Section VI.A.2.d, using a virtual cell ID (as

taught by CATT) likewise satisfies this element. Specifically, because a virtual cell

ID “replaces” the physical cell ID, it also can be represented by 9 bits. See id.; Ex.

1009, 1 (“[A] virtual cell ID can be introduced to replace the current serving cell

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ID.”). Thus, the maximum value of the virtual cell ID is 511, which is no greater

than 541. See Ex. 1003, ¶ 108. A POSITA would have been motivated to use the

virtual ID of CATT in the method of 36.211 for the reasons described above in

Sections VI.A.1 and VI.A.2.c.

5. Dependent Claim 4

a) Preamble: “The method of claim 1”

36.211 and CATT render the method of claim 1 obvious. See supra, §VI.A.2.

b) Element [4.1]: “wherein the initialization sequence


comprises a device-specific sequence.

CATT discloses this limitation. As explained above in Section VI.A.2.b, CATT

teaches using a “virtual cell ID” to achieve “UE-specific DMRS sequence[s].” Ex.

1009, 1. This differentiates prior methods of “cell-specific DMRS sequence[s]” that

made it “hard to obtain the orthogonal RS sequence among different cells.” Id.; see

also id., 1 (“[S]ome enhancements on UL RS [uplink reference signal] seem

necessary to increase the scheduling flexibility” including “UE-specific

configuration of base sequence”), 2 (“A virtual cell ID is introduced to obtain UE-

specific base sequence, including UE-specific configuration of sequence-shift

pattern.”). A POSITA would have been motivated to implement CATT’s device-

specific sequences in 36.211 for the reasons explained above in Sections VI.A.1 and

VI.A.2.b—namely, to increase the orthogonality of 36.211’s uplink reference

signals. See Ex. 1003, ¶110.

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6. Dependent Claim 5

a) Preamble: “The method of claim 1 wherein when cyclic


shift hopping is enabled for the device said generating
comprises”

36.211 and CATT render the method of claim 1 obvious. See supra, §VI.A.2.

b) Element [5.1]: “determining a cyclic shift hopping pattern


from the derived initialization sequence;”

36.211 discloses this element. Specifically, 36.211 defines a quantity

𝑛@X (𝑛P ), which is a cyclic shift hopping pattern that is a function of 𝑛P , a time slot

number. Ex. 1008, §5.5.2.1.1. Cyclic shift hopping pattern 𝑛@X (𝑛P ) is defined by

the following formula:


u
Az
𝑛@X (𝑛P ) = s 𝑐 e8𝑁Pwxy ∙ 𝑛P + 𝑖f ∙ 2-
-tL

Id. Further, 36.211 teaches that pseudo-random sequence 𝑐(𝑖) (as used above) is

initialized with the equation

5677
𝑁34
𝑐-.-/ = 1 : ∙ 2< + 𝑓PP@A?BC
30

which is the derived initialization sequence as explained as above in Section

VI.A.2.b. Thus, 36.211 teaches a cyclic shift hopping pattern 𝑛@X (𝑛P ) derived from

initialization sequence cinit. See id.; Ex. 1003, ¶113.

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c) Element [5.2]: “applying the cyclic shift hopping pattern
to a cyclic shift; and”

36.211 discloses this element. Specifically, 36.211 defines a “cyclic shift 𝛼Z

in a slot 𝑛P .” Ex. 1008, §5.5.2.1.1. Moreover, 36.211 teaches that the cyclic shift

hopping pattern 𝑛@X (𝑛P ) is applied to this cyclic shift, as the below formulas

indicate:

𝛼Z = 2𝜋𝑛5P,Z /12

(h) (i)
𝑛5P,Z = ~𝑛4•\? + 𝑁4•\?,Z + 𝑛@X (𝑛P )€ 𝑚𝑜𝑑 12

Id. As shown above, the cyclic shift 𝛼Z is a function of cyclic shift hopping pattern

(h)
𝑛@X (𝑛P ). Ex. 1003, ¶114. The other terms related to cyclic shift 𝛼Z (namely 𝑛4•\?

(i)
and 𝑛B•\?,Z ) are provided by tables in 36.211, reproduced below:

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Ex. 1008, Tables 5.5.2.1.1-1, 5.5.2.1.1-2.

d) Element [5.3]: “applying the resulting cyclic shift to a


base sequence.”

36.211 discloses this element. As explained above in Section VI.A.2.a, 36.211

teaches the generation of a PUSCH demodulation reference signal (DMRS)

(Z)
sequence 𝑟@A?BC given by:

(Z) (a )
\?
𝑟@A?BC (𝑚 ∙ 𝑀P5 + 𝑛) = 𝑤 (Z)(𝑚)𝑟^,`b (𝑛)

Ex. 1008, §5.5.2.1.1. As shown in the above equation, cyclic shift 𝛼Z is applied to

the base sequence (𝑟̅^,` (𝑛)) to form the DMRS sequence. Ex. 1003, ¶116. Indeed,

(a)
36.211 makes clear that “[r]eference signal sequence 𝑟^,` (𝑛) is defined by a cyclic

shift 𝜶 of a base sequence 𝒓„𝒖,𝒗 (𝒏).” Id., §5.5.1 (“Generation of the Reference

Signal Sequence”).

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Thus, in sum, 36.211 discloses uses the initialization sequence cinit to

determine a cyclic shift hopping pattern 𝑛@X (𝑛P ), which is in turn applied to the

cyclic shift 𝛼Z , which is in turn applied to a base sequence to define a reference

signal sequence. See id., §§5.5.1, 5.5.2.1, 7.2; Ex. 1003, ¶117.

7. Independent Claim 7

Claims 7–11 claim apparatuses (a “wireless device”) analogous to the

methods claimed by claims 1–5, respectively. 36.211 and CATT therefore render

claims 7–11 obvious for the same reasons they render claims 1–5 obvious, as

explained above in Sections VI.A.1–VI.A.6.

a) Preamble: “A wireless device configured to initialize a


pseudorandom sequence generator on which to base
generation of an uplink reference signal, comprising:”

To the extent the preamble is limiting, 36.211 discloses it. See supra,

§VI.A.2.a.

b) Element [7.1]: “a transceiver, and”

36.211 teaches a transceiver. Specifically, 36.211 teaches methods and

apparatuses related to uplink and downlink transmissions. See, e.g., Ex. 1008, §§4

(describing frame structure for transmissions), 5 (describing uplink transmissions),

6 (describing downlink transmissions), 8 (describing timing of transmissions). A

POSITA would have found it obvious that transceivers are used in wireless devices

(such as base stations and UEs) to communicate. Ex. 1003, ¶120. For example, U.S.

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Patent Application 2008/0051091 (“Phan”)—prior art under §§102(a) and (e)—

explains that UEs in LTE systems include, among other components, a “suitable

radio frequency (RF) transceiver 10D for bidirectional wireless communications

with the” base station, which also has a “suitable RF transceiver 12D.” Ex. 1010,

[0039]. Therefore, 36.211 comprises the claimed transceiver, which would have

been obvious to a POSITA. See Ex. 1003, ¶120.

c) Element [7.2]: “one or more processing circuits to:”

36.211 teaches one or more processing circuits. Specifically, 36.211 teaches

methods and apparatuses related to uplink and downlink transmissions. See

generally Ex. 1008. A POSITA would have found it obvious that base stations and

UE implementing the teachings of 36.211 would comprise processing circuits to

carry out those functions. Ex. 1003, ¶121. For example, Phan explains that both UEs

and base stations in LTE systems include “a data processor (DP)” and a “memory

(MEM)…that stores a program (PROG).” Ex. 1010, [0039]. Therefore, 36.211

comprises the claimed “processing circuits,” which would have been obvious to a

POSITA. See Ex. 1003, ¶121.

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d) Element [7.3]: “selectively derive one of the initialization
sequences within a subset of possible initialization
sequences for the sequence generator, according to one or
more rules that define different initialization sequences in
the subset as a function of a single parameter,”

36.211 and CATT render this element obvious. See supra, §VI.A.2.b,

discussing claim 1.

e) Element [7.4]: “by deriving the initialization sequence


based on a defined one-to-one mapping of possible
initialization sequences to possible values for the single
parameter,”

36.211 and CATT render this element obvious. See supra, §VI.A.2.c,

discussing claim 1.

f) Element [7.5]: “wherein the range of the single parameter


is smaller than the range of the subset,”

36.211 and CATT render this element obvious. See supra, §VI.A.2.d,

discussing claim 1.

g) Element [7.6]: “wherein the one or more processing


circuits are configured to derive initialization sequence
cinit according to

J
𝑐-.-/ = 𝑧 + 2 H I,
KL

wherein z is the single parameter and ⌊𝒙⌋ denotes a floor


function that rounds x to the nearest integer lessthan or
equal to x;”

36.211 and CATT render this element obvious. See supra, §VI.A.2.e,

discussing claim 1.

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h) Element [7.7]: “generate the uplink reference signal with
the sequence generator initialized to the derived
initialization sequence; and”

36.211 discloses this element. See supra, §VI.A.2.f, discussing claim 1.

i) 36.211 discloses this element. See supra, §VI.A.2.f,


discussing claim 1.

36.211 discloses this element. See supra, §VI.A.2.g, discussing claim 1.

8. Dependent Claim 8

a) Preamble: “The wireless communications apparatus of


claim 7”

36.211 and CATT render the device of claim 7 obvious. See supra, §VI.A.7.

b) Element [8.1]: “wherein the single parameter comprises


9 or 10 bits, and the initialization sequence comprises 31
bits.”

36.211 discloses this element. See supra, §VI.A.3.b, discussing claim 2.

9. Dependent Claim 9

a) Preamble: “The device of claim 7”

36.211 and CATT render the device of claim 7 obvious. See supra, §VI.A.7.

b) Element [9.1]: “wherein the range of the single parameter


spans between a minimum value of 0 and a maximum
value no greater than 541.”

36.211 discloses this element See supra, §VI.A.4.b, discussing claim 3.

10. Dependent Claim 10

a) Preamble: “The device of claim 7”

36.211 and CATT render the device of claim 7 obvious. See supra, §VI.A.7.

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b) Element [10.1]: “wherein the initialization sequence
comprises a device-specific sequence.”

36.211 and CATT render this element obvious. See supra, §VI.A.5.b,

discussing claim 4.

11. Dependent Claim 11

a) Preamble: “The device of claim 7 wherein when cyclic


shift hopping is enabled for the device the one or more
processing circuits are configured to generate the uplink
reference signal by:”

36.211 and CATT render the device of claim 7 obvious. See supra, §VI.A.7.

To the extent the preamble is limiting, 36.211 and CATT render the preamble

obvious. See supra, §VI.A.6.a, discussing claim 5.

b) Element [11.1]: “determining a cycling shift hopping


pattern from the derived initialization sequence;”

36.211 discloses this element. See supra, §VI.A.6.b, discussing claim 5.

c) Element [11.2]: “applying the cyclic shift hopping pattern


to a cyclic shift; and”

36.211 discloses this element. See supra, §VI.A.6.c, discussing claim 5.

d) Element [11.3]: “applying the resulting cyclic shift to a


base sequence.”

Element [11.3]: “applying the resulting cyclic shift to a base sequence.”

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VII. DISCRETIONARY FACTORS

A. Institution Should Not Be Denied Under §325(d)

Under the Advanced Bionics framework, applying the Becton-Dickinson

factors, the Board first considers whether the same or substantially the same prior

art or arguments were previously presented to the office. Advanced Bionics,

IPR2019-01469, Paper 6, 8. Here, the first condition of the Advanced Bionics

framework is not satisfied, so discretionary denial under §325(d) is not appropriate.

Petitioner presents a single combination of the following prior art references:

36.211 and CATT. 36.211 appears on the face of the ’124 Patent, but was not cited

or discussed by the examiner during prosecution. CATT was not cited on the face of

the ’124 Patent or considered by the examiner. The Board has found that where

presented prior art references include references that were not before the examiner

in combination with a reference that was not substantively considered by an

examiner, such combinations are not the same or substantially the same art or

arguments previously presented to the Office. Group III International, Inc. v. Targus

Group International, Inc., IPR2021-00371, No. 21 at 33 (P.T.A.B. Jul. 9, 2021); see

also Intel Corporation v. Koninklijke Philips N.V., IPR2021-00370, No. 10 at 9

(P.T.A.B. Jul. 6, 2021) (finding that the first condition of Advanced Bionics was not

satisfied where a single reference had been cited on the face of the Challenged Patent

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U.S. Patent No. 8,731,124
while the other references were not before the examiner and declining to consider

the material error condition of Advanced Bionics).

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. v. Canon Kabushiki Kaisha,

IPR2016-01357, Paper 19 at 15-19 (September 6, 2017) (precedential).

Samsung previously challenged the ’124 Patent in IPR2021-00732

(“Samsung IPR”), which terminated pursuant to settlement prior to a preliminary

response. Because Apple was not a party to Samsung IPR, this is Apple’s first

challenge to the ’124 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 (Sep. 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.

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VIII. CONCLUSION

Petitioner requests institution of an IPR and cancellation of the Challenged

Claims.

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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IX. MANDATORY NOTICES

A. Real Party-In-Interest

Apple Inc. is the real party-in-interest.

B. Related Matters

The ’124 Patent was challenged in the following proceeding, now terminated:

• Samsung v. Ericsson, IPR2021-00732 (Mar. 26, 2021)

C. 37 C.F.R. §42.8(b)(3): Counsel 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

Apple concurrently submits a Power of Attorney, 37 C.F.R. §42.10(b), and

consents to electronic service directed to the counsel email addresses listed above

and PTAB@eriseip.com.

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LIST OF EXHIBITS

Exhibit Description
No.
1001 U.S. Patent No. 8,731,124 (“the ’124 Patent”)
1002 File History of U.S. Patent No. 8,731,124
1003 Declaration of Dr. Apostolos (Paul) K. Kakaes in Support of Inter
Partes Review of U.S. Patent No. 8,731,124
1004 Curriculum Vitae of Dr. Apostolos (Paul) K. Kakaes
1005 Declaration of Friedhelm Rodermund in Support of Inter Partes
Review of U.S. Patent No. 8,731,124
1006 Curriculum Vitae of Friedhelm Rodermund
1007 U.S. Provisional Patent Application No. 60/984,818
1008 “Evolved Universal Terrestrial Radio Access (E-UTRA); Physical
Channels and Modulation,” 3GPP TS 36.211, Version 10.4.0
(Release 10) (“36.211”)
1009 “Further Details on UE-Specific UL DMRS” 3GPP TSG RAN WG1
#68 Meeting R1-120106, submitted by CATT (“CATT”)
1010 U.S. Patent Application No. 2008/0051091 (“Phan”)

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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 9,639 words according to the word-processing program used to prepare this

document (Microsoft Word).

Dated: January 19, 2022

BY: /s/ Adam P. Seitz


Adam P. Seitz, Reg. No. 52,206

COUNSEL FOR PETITIONER

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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 ’124 Patent as listed on PAIR:

COATS & BENNETT, PLLC


1400 Crescent Green,
Suite 300
Cary, NC 27518

BY: /s/ Adam P. Seitz


Adam P. Seitz, Reg. No. 52,206

COUNSEL FOR PETITIONER

56

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