Paper No. 32
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`SAMSUNG ELECTRONICS CO. LTD.; SAMSUNG ELECTRONICS
`AMERICA, INC.; SAMSUNG TELECOMMUNICATIONS AMERICA, LLC;
`AND SAMSUNG AUSTIN SEMICONDUCTOR, LLC;
`Petitioner
`
`v.
`
`REMBRANDT WIRELESS TECHNOLOGIES, LP
`Patent Owner
`___________
`
`Case IPR2014-00518
`Patent 8,023,580
`___________
`
`PETITIONER’S REPLY IN SUPPORT OF
`ITS PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,023,580
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`CLAIMS 1, 4, 5, 10, 13, 20–22, 54, 57-58, 61-62, 66, 70, AND 76–79 OF
`THE `580 PATENT ARE UNPATENTABLE ......................................... 1
`PETITIONER HAS ESTABLISHED OBVIOUSNESS .......................... 1
`
`A.
`
`Upender Demonstrates Motivation For The Combination.................. 2
`
`1.
`
`2.
`
`Determinacy And Simplicity Are Important Factors To
`Consider When Choosing A MAC Protocol............................. 2
`
`Dr. Koopman Admits That Determinacy and Simplicity Are
`Reasons To Select A Master/Slave MAC Protocol................... 3
`
`B.
`
`C.
`
`Boer Uses A MAC Protocol Having Disadvantages When Compared
`To A Master/Slave Protocol............................................................... 4
`
`A Person Having Ordinary Skill In The Art Would Weigh The
`Strengths And Weaknesses Of The Various MAC Protocols ............. 5
`
`D. When The Prior Art Discloses Many Embodiments, The Fact That
`Certain Alternatives Might Be Better Does Not Negate Motivation To
`Use The Lesser Embodiments............................................................ 5
`
`1.
`
`2.
`
`The Alleged Benefits Provided By Boer’s CSMA/CA Do Not
`Relate To Any Claimed Feature............................................... 7
`
`Upender Does Not Teach Away............................................... 8
`
`E.
`Dr. Koopman’s Testimony Is Suspect................................................ 9
`III. PPM/DQPSK IS A DIFFERENT “TYPE OF MODULATION
`METHOD” THAN DBPSK....................................................................... 9
`
`A.
`
`The Proper Construction Of “At Least Two Types Of Modulation
`Methods” Is Not Limited To “Families Of Modulation Methods” ... 10
`
`1.
`
`2.
`
`3.
`
`Patent Owner’s Statement Made During Prosecution Regarding
`“Families Of Modulation Methods” Is Not Binding On Board10
`
`Patent Owner’s Construction Makes No Sense ...................... 10
`
`Subsequent Prosecution Precludes Patent Owner’s Construction
`............................................................................................... 11
`i
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
`
`B.
`
`C.
`
`Boer Teaches Different Types Of Modulation Methods................... 12
`
`Pulse Position Modulation Is Not Coding ........................................ 15
`
`IV. THE LEVEL OF ORDINARY SKILL IN THE ART HAS NO
`BEARING ON THE OUTCOME........................................................... 15
`
`V.
`
`CONCLUSION ........................................................................................ 15
`
`ii
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
`
`TABLE OF AUTHORITIES
`
`Cases
`In re Gurley, 27 F.3d 551 (Fed. Cir. 1994)............................................................. 8
`
`In re Mouttet, 686 F.3d 1322 (Fed. Cir. 2012) ....................................................... 8
`Innovative Biometric Tech., LLC. v. Toshiba Am. Info. Systems, Inc. (S.D. Fla.
`2012) ................................................................................................................ 10
`
`Innovention Toys, LLC v. MGA Ent., Inc., 637 F.3d 1314 (Fed. Cir. 2011).......... 16
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007).............................................5, 6
`
`Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881 (Fed. Cir. 1984)...................... 9
`Sakraida v. Ag Pro, Inc., 425 U.S. 273 (1976)....................................................... 6
`
`Schrader-Bridgeport Int’l, Inc. v. Continental Auto. Sys., Inc., IPR2013-00014,
`Paper 32 (Mar. 12, 2014).................................................................................... 7
`
`Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371 (Fed. Cir. 2005)..................... 9
`
`Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973 (Fed. Cir. 2014)..................... 11
`
`iii
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
`
`Exhibit No.
`1201
`1202
`
`1203
`
`1204
`1205
`
`1206
`
`1207
`1208
`
`1209
`
`1210
`
`1211
`
`1212
`1213
`
`1214
`1215
`
`EXHIBIT LIST
`Description
`U.S. Patent No. 8,023,580
`Complaint, Rembrandt Wireless Technologies, LP v. Samsung
`Electronics Co. Ltd, et al, No. 2:13-cv-00213 (ED. Tex 2013)
`(March 15, 2013)
`Proof of Service of Samsung Austin Semiconductor, LLC,
`Rembrandt Wireless Technologies, LP v. Samsung Electronics
`Co. Ltd, et al, No. 2:13-cv-00213 (ED. Tex 2013) (March 20,
`2013)
`U.S. Patent No. 5,706,428
`Infringement Contentions, Rembrandt Wireless Technologies,
`LP v. Samsung Electronics Co. Ltd, et al, No. 2:13-cv-00213
`(ED. Tex 2013) (July 25, 2013)
`“The IEEE Standard Dictionary of Electrical and Electronics
`Terms,” 6th Ed., 1996, p. 662
`U.S. Application No. 12/543,910, as filed
`Office Action mailed on September 1, 2010 for U.S.
`Application No. 12/543,910
`Reply Pursuant to 37 CFR 1.111, dated March 1, 2011, for
`U.S. Application No. 12/543,910
`Reply Pursuant to 37 CFR 1.111, dated March 10, 2011, for
`U.S. Application No. 12/543,910
`Reply Pursuant to 37 CFR 1.111(a)(2), dated May 11, 2011,
`for U.S. Application No. 12/543,910
`Notice of Allowance and Issue Fee(s) Due, dated July 22, 2011
`Amendment After Allowance Pursuant to 37 CFR § 1.312,
`dated July 26, 2011, for U.S. Application No. 12/543,910
`U.S. Patent No. 6,614,838
`Office Action mailed June 28, 2001 for U.S. Application No.
`09/205,205
`
`iv
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
`
`Exhibit No.
`1216
`
`1217
`
`1218
`
`1219
`
`1220
`
`1221
`
`1222
`
`1223
`1224
`
`1225
`
`1226
`
`1227
`
`1228
`
`1229
`
`Description
`First Amendment and Response, dated October 5, 2001, in
`U.S. Application No. 09/205,205
`P.R. 4-3 Joint Claim Construction Statement Rembrandt
`Wireless Technologies, LP v. Samsung Electronics Co. Ltd, et
`al, No. 2:13-cv-00213 (ED. Tex 2013)
`Declaration of Jon Mears; Exhibit A thereto (Upender et al,
`“Communication Protocols for Embedded Systems,”
`Embedded Systems Programming, Vol. 7, Issue 11, November
`1994.
`“Dictionary Of Communications Technology,” 1995, pp. 259,
`404
`Declaration of Dr. David Goodman, including Curriculum
`Vitae
`Deposition Transcript of Dr. Christopher Jones, dated January
`7, 2015
`Notice of Deposition of Dr. Christopher Jones, dated
`December 29, 2014
`U.S. Patent No. 8,457,228 B2
`Illustration by Dr. Christopher Jones drawn at deposition,
`January 7, 2015
`Illustration by Dr. Christopher Jones drawn at deposition,
`January 7, 2015
`Illustration by Dr. Christopher Jones drawn at deposition,
`January 7, 2015
`Illustration of DBPSK modulation drawn by Dr. Christopher
`Jones at deposition, January 7, 2015
`Illustration of 5 Mbps PPM/DQPSK modulation drawn by Dr.
`Christopher Jones at deposition, January 7, 2015
`Illustration of 8 Mbps PPM/DQPSK modulation drawn by Dr.
`Christopher Jones at deposition, January 7, 2015
`
`v
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
`
`Exhibit No.
`1230
`
`1231
`
`1232
`
`1233
`1234
`1235
`1236
`
`1237
`
`1238
`
`Description
`Illustration by Dr. Christopher Jones drawn at deposition,
`January 7, 2015
`Illustration by Dr. Christopher Jones drawn at deposition,
`January 7, 2015
`Data Network Evaluation Criteria Handbook, DOT/FAA/AR-
`09/24 Final Report, dated June 2009
`U.S. Patent No. 5,450,404
`U.S. Patent No. 5,436,901
`U.S. Patent No. 5,535,212
`Order Granting Motion for Fees and Costs, Requesting
`Submission of Materials for in camera Review and Granting
`Motion to Strike, Innovative Biometric Tech., LLC v Toshiba
`Am. Info. Sys., No. 9:09-81046-CIV-KLR, dated August 29,
`2012.
`Order Granting Toshiba America Information Systems, Inc.’s
`Motion to Unseal Court Orders (DE 340, 357, and 372),
`Innovative Biometric Tech., LLC v Lenovo (U.S.), Inc., No.
`9:09-81046-CIV-KLR, dated June 27, 2013.
`Deposition Transcript of Philip J. Koopman, Jr., Ph.D., dated
`January 13, 2015
`
`vi
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
`
`Petitioner respectfully submits this Reply in Support of its Petition seeking
`
`inter partes review of U.S. Patent 8,023,580 (Ex. 1201), “the `580 patent.
`
`I.
`
`CLAIMS 1, 4, 5, 10, 13, 20–22, 54, 57-58, 61-62, 66, 70, AND 76–79 OF
`THE `580 PATENT ARE UNPATENTABLE
`Petitioner has shown that the instituted claims are rendered obvious by the
`
`subject matter Patent Owner (“PO”) admitted was prior art in the specification and
`
`prosecution history of the `580 patent (“APA”) in combination with U.S. Patent
`
`No. 5,706,428, Ex. 1204 (“Boer”). See e.g., Petition, Paper 1 & Ex. 1220. PO
`
`disagrees for two reasons. First, PO argues that a person having ordinary skill
`
`would not have been motivated to combine Boer and the APA. Second, PO argues
`
`that Boer does not teach “at least two types of modulation methods,” as required by
`
`each of the claims. Neither of these positions has any merit.
`
`II.
`
`PETITIONER HAS ESTABLISHED OBVIOUSNESS
`In the Institution Decision, the Board found that a person having ordinary
`
`skill in the art would have been motivated to combine Boer’s teachings with the
`
`APA because master/slave systems were well-known for simplicity and
`
`determinacy. The Board relied on Upender, Ex. 1218, which the Board noted was
`
`a 1994 publication that “compares various strengths and weaknesses for
`communication protocols for embedded systems.” Paper 16, p. 11.1 PO argues
`that Upender does not provide any motivation. PO also argues that there is a
`
`1 PO asserts that Petitioner relied on Upender to argue that a motivation to combine
`the APA and Boer was flexibility and efficiency. Paper 25, p. 29. This is wrong.
`
`Upender was only cited regarding simplicity and determinacy. Paper 1, p. 18.
`
`1
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
`
`“teaching away,” asserting that a person having ordinary skill also would have
`
`been motivated to modify Boer in a different manner. PO’s arguments are wrong.
`
`Upender Demonstrates Motivation For The Combination
`A.
`Upender is a paper discussing various media access control (“MAC”)
`
`protocols that could be used in a local area network (LAN). Ex. 1218, p. 46. A
`
`MAC protocol, as its name suggests, determines how a network “picks the next
`
`transmitter for access to the shared network medium. . . .” Ex. 1218, p. 46. As
`
`evidenced by Upender, there were many different MAC protocols known before
`
`the priority date of the `580 patent. Examples of such protocols included (i)
`
`connection-oriented protocols, (ii) master/slave, also called polling, (iii) time
`
`division multiple access, (iv) token ring, (v) token bus, (vi) binary countdown, (vii)
`
`carrier sense multiple access with collision detection (CSMA/CD), and (viii)
`
`reservation carrier sense multiple access (RCSMA). See Ex. 1218. It is
`
`undisputed that prior to the filing date in 1997, the master/slave protocol was a
`popular protocol. See Ex. 1218, p. 50 (“Polling is one of the more popular
`
`protocols for embedded systems…”). See also Ex. 1238, 73:4-20 (“I would say,
`
`you know, if you want to look at the entire world, there are probably more
`
`master/slave systems, but that's a reflection on the types of applications that had
`
`networks. . .”).
`
`1. Determinacy And Simplicity Are Important Factors To Consider
`When Choosing A MAC Protocol
`Upender teaches that each of the different MAC protocols have strengths
`
`and weaknesses vis-à-vis each other. Upender teaches that two important
`
`2
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
`
`considerations for choosing a MAC protocol are determinacy and simplicity. Id. at
`
`47. Determinacy is “the ability to calculate worst-case response time,” which “is
`
`important for meeting the real-time constraints of many embedded control
`applications.” Id. See also Ex. 1238, 120:18-121:6. According to an FAA
`
`handbook coauthored by PO’s expert Dr. Koopman, a non-deterministic MAC
`
`protocol can result in “collisions” between transmitted messages, which is a
`
`“problem.” Ex. 1232, p. A-10.
`
`Regarding simplicity, Upender teaches that a “vital consideration is the cost
`
`per node.” Ex. 1218, p. 47. Upender further teaches that “[s]imple protocols
`
`require less hardware and software resources and are therefore likely to be less
`
`expensive. For extremely cost-sensitive high-volume applications, these protocols
`
`are good candidates.” Id. The article discusses each protocol in a progression
`from “very simple” to “complex.” Id. Master/slave is discussed second, indicating
`
`that it is one of the simplest, and thus least costly.
`
`2. Dr. Koopman Admits That Determinacy and Simplicity Are
`Reasons To Select A Master/Slave MAC Protocol
`PO asserts that a person having ordinary skill in the art would not be
`
`motivated to combine the master/slave protocol of the APA with Boer. Yet, in his
`
`deposition, PO’s expert Dr. Koopman admitted that determinacy and simplicity
`
`would lead a person having ordinary skill in the art to consider using a
`
`master/slave protocol. Ex. 1238, 119:14-120:3 (“. . . if you want determinacy that
`
`would -- that would keep master/slave on your list of candidates. . . .”). The same
`
`is true for simplicity, where Dr. Koopman admitted that if a person having ordinary
`
`3
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
`
`skill valued simplicity, it would lead them to consider using a master/slave
`
`protocol. Id. at 115:12-116:20. (“The fact that [master/slave] was simple would
`
`lead them to consider it in applications where simple was important.”).
`
`B.
`
`Boer Uses A MAC Protocol Having Disadvantages When
`Compared To A Master/Slave Protocol.
`Boer MAC protocol is what it calls “carrier sense multiple access with
`
`collision avoidance,” or “CSMA/CA.” Ex. 1204, 4:25-27. Boer’s MAC protocol
`
`is neither simple nor deterministic. Thus, a person having ordinary skill in the art
`
`who wanted a multiple data rate communication system like that in Boer and the
`
`advantages of simplicity and determinacy would be motivated to make Petitioner’s
`combination. See Ex. 1220 (Goodman Decl.), ¶103.
`
`Petitioner notes that what Boer refers to as “CSMA/CA” corresponds to
`
`what Upender calls “CSMA/CD,” or “carrier sense multiple access with collision
`
`detection.” Ex. 2208, ¶¶75-78 & Ex. 1238, 123:20-124:3. Upender clearly states
`that CSMA/CD has poor determinacy. See Ex. 1218, p. 54 (“However, under
`
`heavy traffic, the overhead is unbounded due to high probability of repeated
`
`collisions. Consequently, this protocol has poor determinacy.”). At his deposition,
`
`Dr. Koopman admitted that the CSMA/CA protocol used in Boer could experience
`
`collisions and thus lacked determinacy. See Ex. 1238, 128:19-129:7. Boer itself
`
`states that CSMA/CA can experience collisions. Ex. 1204, 4:25-40.
`
`As for simplicity, Upender states that its discussion of the various MAC
`
`protocols “progresses from very simple to complex, high-performance protocols.”
`
`Ex. 1218, p. 47. The master/slave protocol is discussed second, meaning it is one
`
`4
`
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`

`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
`
`of the simplest, while CSMA/CD (i.e., the CSMA/CA of Boer), is discussed
`
`seventh, demonstrating that simplicity is not its strength.
`
`C.
`
`A Person Having Ordinary Skill In The Art Would Weigh The
`Strengths And Weaknesses Of The Various MAC Protocols
`The entire point of Upender is to discuss “strengths and weaknesses” of
`
`various MAC protocols. Ex. 1218, p. 46. Upender summarizes its conclusions by
`
`stating “this article’s discussion of the special considerations and media access
`
`protocol strengths and weaknesses should allow you to select the best protocol to
`
`match your needs.” Id. at 57. The authors of Upender do say that that they felt at
`
`RCSMA was “ good choice” for their systems. Id. at 56-57. However, at his
`
`deposition, Dr. Koopman admitted that even RSCMA had weaknesses, one of
`
`which was “scaling up for network with lots of nodes.” Ex. 1238, 64:2-16.
`
`D. When The Prior Art Discloses Many Embodiments, The Fact
`That Certain Alternatives Might Be Better Does Not Negate
`Motivation To Use The Lesser Embodiments
`As seen from the above, in 1997 persons having ordinary skill in the art
`
`knew that there were many different types of MAC protocols available for use.
`According to KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007), [w]hen there
`
`is a design need or market pressure to solve a problem and there are a finite
`
`number of identified, predictable solutions, a person of ordinary skill has good
`
`reason to pursue the known options within his or her technical grasp. If this leads
`
`to the anticipated success, it is likely the product not of innovation but of ordinary
`skill and common sense.” According to KSR, the fact that persons having ordinary
`
`skill in the art knew about the various MAC protocols, including master/slave, and
`
`5
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`

`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
`
`knew that it could be used to create a simple and deterministic MAC protocol is all
`
`that is needed to establish obviousness. Indeed, KSR reiterated the Supreme
`
`Court’s long-standing principle that “‘when a patent ‘simply arranges old elements
`
`with each performing the same function it had been known to perform’ and yields
`
`no more than one would expect from such an arrangement, the combination is
`
`obvious.” Id. at 417 (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)).
`
`That master/slave was an ‘old element’ is not in dispute. Indeed, the `580
`
`patent admits master/slave is prior art, Upender identifies master/slave as “one of
`
`the more popular protocols” and Dr. Koopman testified that master/slave systems
`
`were common in 1997. Ex. 1238, 73:4-20 (“I would say, you know, if you want to
`
`look at the entire world, there are probably more master/slave systems. . . .”). The
`
`only other claimed elements relate to the use of different modulation types, which
`
`is found in Boer (discussed below), meaning that all the claimed elements are “old
`
`elements” that perform the “same function” they did in the prior art, demonstrating
`
`that the claims are obvious. KSR, 550 U.S. at 417.
`
`PO’s argument against motivation to combine is that a master/slave protocol
`
`has certain disadvantages when compared to certain strengths of the CSMA/CA
`
`used in Boer. Paper 25, pp. 33-40. Boer’s CSMA/CA’s strengths include
`
`increased flexibility and efficiency. Id. at 35-36. PO argues that these strengths,
`
`when weighed against the weaknesses of master/slave, would teach away from
`
`using a master/slave protocol with Boer. Id. at 38-44. PO’s argument fails as a
`
`matter of fact and law.
`
`6
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
`
`1. The Alleged Benefits Provided By Boer’s CSMA/CA Do Not
`Relate To Any Claimed Feature
`PO argues that Boer’s CSMA/CA provides benefits over master/slave, and
`
`because of these benefits, Boer teaches away from the combination. For example,
`
`Dr. Koopman asserts that CSMA more easily supports a large number of stations
`
`than does a master/slave protocol. Dr. Koopman, however, admitted at his
`
`deposition that none of the challenged claims contain any limitations directed to a
`
`large number of stations and that such a requirement was “not relevant.” Ex. 1238,
`
`156:2-11 (“I would say for this patent, the number of stations is not relevant.”).
`
`Dr. Koopman also argued that the master/slave protocol’s alleged inability to
`
`allow admission of new stations to a network would cause an ordinarily skilled
`
`person to avoid the combination. Ex. 2208, ¶81. Dr. Koopman, however, admitted
`
`that this requirement was also not found in the claims. Ex. 1238, 175:14-176:7. In
`
`fact, Dr. Koopman admitted that he was not aware of any requirement in the claims
`
`relating to flexibility, efficiency or overhead, all of which PO asserts lead to no
`
`motivation to combine. Ex. 1238, 177:13-178:11. Because these features are
`
`unclaimed, they cannot be used to argue against motivation to combine. Schrader-
`Bridgeport Int’l, Inc. v. Continental Auto. Sys., Inc., IPR2013-00014, Paper 32, p.
`
`11 (Mar. 12, 2014) (Argument against motivation to combine not accepted when
`
`unclaimed feature is basis for the argument).
`
`According to the Federal Circuit, “a reference may be said to teach away
`
`when a person of ordinary skill, upon reading the reference, would be discouraged
`
`from following the path set out in the reference, or would be led in a direction
`
`divergent from the path that was taken by the applicant. In re Gurley, 27 F.3d 551,
`
`7
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`

`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
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`553 (Fed. Cir. 1994). PO argues that Boer discourages use of master/slave because of
`
`its alleged desire to reduce overhead. Paper 25, pp. 40-41 & Ex. 2008 (Koopman
`
`Decl.), ¶97. The portion in Boer cited by PO for support for this “teaching away”
`
`argument says nothing about CSMA/CA contributing to a reduction in overhead,
`
`saying instead that using short acknowledgment messages provides this benefit. Ex.
`
`1204, 8:29-30. Thus, Boer itself does not discourage use of master/slave.
`
`Regardless, as discussed, Dr. Koopman admitted that he did not see overhead as
`
`part of the claimed invention (Ex. 1238, 178:6-11).
`
`2. Upender Does Not Teach Away
`Even if Boer or Upender suggest that CSMA/CA is better than master/slave,
`
`that does not mean the references teach away from the combination. The Federal
`
`Circuit has held that “just because better alternatives exist in the prior art does not
`
`mean that an inferior combination is inapt for obviousness purposes.” In re
`
`Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012) (Board’s obviousness determination
`
`affirmed). Indeed, even though Dr. Koopman’s declaration asserts that Upender
`
`would only motivate one to replace the CSMA/CA in Boer with the RCSMA in
`
`Upender, Dr. Koopman testified at his deposition that there were some applications
`
`where RCSMA was better and others where master/slave was better. Ex. 1238,
`
`39:2-20 (“Let me be more precise. There are some systems for which master/slave
`
`is clearly a better match for the design requirements. There are some systems
`
`which reservation CSMA/CA is a better match for requirements, and the
`
`requirements include technical factors.”). Upender itself states that readers can use
`
`its teachings to “select the best protocol to match your needs,” (Ex. 1218, pp. 56-
`
`8
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
`
`57), which hardly amounts to a teaching that only RCSMA should be used.
`
`The fact that even Dr. Koopman admits that master/slave would be a “better
`
`match” in certain circumstances demonstrates PO is wrong, as a “teaching away”
`
`requires more than arguing that an alternative combination is better - the prior art
`
`has to provide “clear discouragement of that combination.” Syntex (U.S.A.) LLC v.
`
`Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005). As Dr. Koopman’s cross-
`
`examination establishes, none of PO’s arguments establish that the APA, Boer or
`
`Upender provide any discouragement at all, let alone “clear discouragement.”
`
`Dr. Koopman’s Testimony Is Suspect
`E.
`Dr. Koopman is a co-author of Upender. His attempt to argue that Upender
`
`discourages use of master/slave is belied by its text and is an example of why the
`
`Federal Circuit has “serious reservations about the propriety” of clarifying the
`
`teachings of the prior art with expert testimony from the prior art’s inventor. Lear
`
`Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 888 (Fed. Cir. 1984). The problems
`
`with Dr. Koopman’s testimony are amplified by his admission that he did not
`completely analyze the claims prior to testifying. Ex. 1238, 154:21-155:5.2
`
`III. PPM/DQPSK IS A DIFFERENT “TYPE OF MODULATION
`METHOD” THAN DBPSK
`In the Institution Decision, the Board held that PPM/DQPSK “falls within
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`the meaning of a ‘different type’ of modulation method under any reasonable
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`2 His testimony was previously found suspect in Innovative Biometric Tech. v.
`Toshiba Am. Info. Systems (S.D. Fla. 2012), Ex. 1236, p. 4 (“The record evidence
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`contradicted Dr. Koopman’s opinions on every dispositive factual issue.”).
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`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
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`construction of the terms.” Paper 16, p. 12. Petitioner respectfully submits this
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`finding was correct. PO disagrees, arguing instead that, despite its name, pulse
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`position modulation is not modulation at all, and PPM/DQPSK is the same type of
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`modulation method as DBPSK. Paper 25, 44-52. This is wrong.
`
`A.
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`The Proper Construction Of “At Least Two Types Of Modulation
`Methods” Is Not Limited To “Families Of Modulation Methods”
`1. Patent Owner’s Statement Made During Prosecution Regarding
`“Families Of Modulation Methods” Is Not Binding On Board
`As Petitioner predicted (Paper 1, pp. 10-13), PO relies almost exclusively on
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`a statement it made during prosecution that different “types” of modulation
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`methods refers to “different families of modulation techniques.” Ex. 1209, p. 20.
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`This self-serving statement, made years after the `580 patent’s priority date, was
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`not made to overcome any rejection, since claim 1 had already been allowed. Ex.
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`1209, p. 20. According to the Federal Circuit, the Board is free to reject
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`constructions provided by a patentee during prosecution unless the argument is
`
`made to overcome a rejection. Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973,
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`978 (Fed. Cir. 2014) (“This court also observes that the PTO is under no obligation
`
`to accept a claim construction proffered as a prosecution history disclaimer, which
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`generally only binds the patent owner.”)
`
`2. Patent Owner’s Construction Makes No Sense
`At his deposition, Dr. Jones testified that two modulation methods would not
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`be a different “type” if they share at least one characteristic. Ex. 1221, 165:17-
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`166:5. There are three examples of modulation methods in the patent: quadrature
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`amplitude modulation (QAM), carrierless amplitude and phase modulation (CAP),
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`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
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`and discrete multitone modulation (DMT). Ex. 1201, 2:1-5. Dr. Jones testified
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`that every pair-wise combination of these modulation methods are not different
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`types of modulation methods. Ex. 1221,165:3-166:5. Thus, no examples in the
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`specification satisfy the claim limitations under PO’s construction. Further,
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`despite saying that each possible pair of modulation methods in the patent are not
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`different types, Dr. Jones was not able to determine whether they were the same
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`type of modulation method. Id., 166:6-23 (“So I can say that they are different
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`types or I can say that they're not different types. But saying whether or not they're
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`the same is difficult. I don't know the answer.”). It is remarkable that Dr. Jones
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`can determine whether different modulation methods are or are not different types
`
`while at the same time being unable to determine whether the alleged different
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`methods are the same type of modulation method. The contortions Dr. Jones twists
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`himself into to avoid Boer demonstrates that PO’s construction is wrong.
`
`3. Subsequent Prosecution Precludes Patent Owner’s Construction
`PO’s construction is also impossible to square with a claim it obtained in a
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`continuation to the `580 patent, U.S. Patent 8,457,228, Ex. 1223. Just as with the
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`challenged claims here, claim 26 of the `228 patent requires that “the at least two
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`different types of modulation methods” comprise “a first modulation method and a
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`second modulation method.” Claim 43 of the `228 patent, which depends from
`
`claim 26, requires that “at least one of said first or second modulation methods
`implements phase modulation.” Because “at least one” of the first or second
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`modulation methods implements phase modulation, the plain English of claim 43
`
`means that both the first and second modulation methods can implement phase
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`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
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`modulation. This makes PO’s tortured construction impossible, since according to
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`Dr. Jones, if two different modulation methods both implement phase modulation,
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`they would be different “types.” Ex. 1221, 165:17-166:5. When confronted with
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`this at his deposition, Dr. Jones first agreed that claim 43 required that the first and
`
`second modulation methods could both implement phase modulation. Id., 153:13-
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`155:8. Dr. Jones then dissembled, asserting incorrectly that independent claim 26
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`trumped dependent claim 43 while also effectively attempting to rewrite the claim.
`Id., 156:6-160:18. Note that Petitioner’s construction of “types of modulation
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`methods” is in complete accord with claim 43, since two incompatible modulation
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`methods can both implement phase modulation.
`
`Boer Teaches Different Types Of Modulation Methods
`B.
`Boer discloses that all the modulation methods it uses have a “symbol rate”
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`of 1 Megabaud. Ex. 1204, 2:51-53. Dr. Jones testified at his deposition that
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`“[s]ymbols are used by modulation methods to express information.” Ex. 1221,
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`20:23-21:2. Dr. Jones further testified each modulation method has a specific
`
`number of symbols Id., 23:20-25:10. Finally, Dr. Jones testified that for each
`
`modulation method, a symbol represents a certain number of bits. DBPSK has two
`
`symbols with each representing one bit (Id., 26:18-22) and DQPSK has four
`symbols with each representing two bits (Id., 27:12-17).
`
`Boer discloses two different PPM/DQPSK modulation methods, one for
`
`each of 5 Mbps and 8 Mbps transmissions. For 5 Mbps PPM/DQPSK, there are
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`thirty-two symbols (Id. 44:3-5), with each symbol representing five bits (Id.,
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`34:10-13). Two of the five bits of each symbol are represented by the phase of the
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`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
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`transmission. Id., 36:8-12. Three of the five bits of each symbol are determined
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`by the slot in which the transmission embodying the phase change is located.
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`There are eight such slots (which are also called “positions”). Id. 37:3-10 & 38:2-8.
`See also Ex. 1204, 2:44-47.
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`8 Mbps PPM/DQPSK is more complicated. It still has eight slot positions
`
`(Ex. 1221, 52:17-20), but it can send the I (in-phase) and Q (quadrature)
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`components in different ones of the eight slot positions. Id., 49:10-22 & 53:25-
`54:15. See also Ex 1204, 2:48-51. Thus, in Boer’s 8 Mbps PPM/DQPSK, there
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`are 256 symbols (Ex. 1221, 50:5-13), with each symbol representing eight bits (Id.,
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`48:15-19). Two of the eight bits are determined by the phase (Id. 48:20-24) while
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`six of the bits per symbol are determined by the time slots of the I and Q
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`components (Id., 48:25-50:13). Thus, it is not disputed that for both the 5 Mbps
`
`and 8 Mbps PPM/DQPSK modulation methods, the majority of the bits transmitted
`
`per symbol are provided by something other than a phase shift of a carrier wave.
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`The absurdity of PO’s position was seen at Dr. Jones’ deposition, where he
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`testified that the majority of the bits sent via PPM/DQPSK modulation are not
`modulated because they are pulse position modulated. Id., 92:25-93:4 (“Q. So as I
`
`understand your position, for the 5 Mbps PPM/DQPSK modulation, it's your
`
`opinion that some of the bits are not modulated because they are pulse position
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`modulated; is that right?; A. Correct.”). See also Id., 100:7-11.
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`That DBPSK and PPM/DQPSK are different types of modulation methods
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`can also be seen by comparing the waveforms produced by a transmitter. Dr.
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`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
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`Jones drew the waveforms for the data stream “11000110”3 at his deposition:
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`DBPSK (Ex. 1227)
`
`5 Mbps PPM/DQPSK (Ex. 1228)
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`8 Mbps PPM/DQPSK (Ex. 1229)
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`These modulated waveforms carry the same information, but are totally
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`different from one another. For the PPM/DQPSK waveforms, the timing of the
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`transmission (e.g., its time slot) plainly varies the carrier as a function of the data
`
`being transmitted, just as Dr. Goodman testified at his deposition. Ex. 2211, 31:9-
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`19. (“[The selection of the time at which the sine wave is going to be transmitted]
`
`doesn’t alter the frequency or the amplitude, needn't alter the phase. But I would
`
`say that the timing itself is a characteristic, within the context of information
`transmission, the timing is certainly a characteristic of the sine wave.”).4 In sum,
`pulse position modulation plainly varies a characteristic of a carrier. See Ex. 1220,
`
`¶¶109, 124. Note also that neither parties’ construction for “modulation methods”
`
`limits the varied characteristic to phase, amplitude or f