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
`___________
`
`
`
`
`
`DECLARATION OF DAVID GOODMAN
`
`IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,023,580
`
`
`
`
`
`
`
`Exhibit 1220 01/71
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`

`

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`
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
`
`EXPERT QUALIFICATIONS AND CREDENTIALS .................................. 1
`
`III. BASIS FOR OPINIONS AND MATERIALS REVIEWED .......................... 5
`
`IV. LEGAL PRINCIPLES ..................................................................................... 6
`
`A. Anticipation ........................................................................................... 6
`
`B.
`
`C.
`
`Obviousness ........................................................................................... 9
`
`Claim Interpretation in Inter Partes Review ....................................... 15
`
`V.
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`THE TECHNOLOGY DESCRIBED IN THE `580 PATENT ..................... 15
`
`VI. THE ADMITTED PRIOR ART IN THE `580 PATENT ............................. 18
`
`VII. PROSECUTION HISTORY OF THE `580 PATENT .................................. 20
`
`VIII. PERSON OF ORDINARY SKILL IN THE ART ........................................ 21
`
`IX. CLAIM CONSTRUCTION .......................................................................... 21
`
`A.
`
`B.
`
`C.
`
`D.
`
`“At Least Two Types Of Modulation Methods” (Claims 1 and 58) ... 21
`
`“First Modulation Method” (Claims 1, 2, 13, 19, 21, 22, 49, 54,
`58, 59, 70, 76, 78, 79) And “Second Modulation Method” (Claims
`1, 13, 20, 22, 49, 54, 58, 70, 77, 79) ................................................... 23
`
`“Master” (Claims 1, 2, 10, 11, 12, 49, 54, 58, 59, 66, 68, 69) ............ 24
`
`“Slave” (Claims 1,2, 10, 11, 58, 59, 66, 68) ....................................... 24
`
`X.
`
`The Prior Art .................................................................................................. 25
`
`A.
`
`Claims 1, 2, 4-5, 10, 13, 19-22, 49, 52-54, 57-59, 61, 62, 66, 70,
`and 76-79 Are Rendered Obvious Under 35 U.S.C. § 103 By
`Admitted Prior Art (“APA”) In View Of Boer ................................... 25
`
`1.
`
`2.
`
`The Admitted Master/Slave Prior Art ....................................... 25
`
`The Prior Art Boer Patent ......................................................... 26
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`DOCSLA-118536v1
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`Exhibit 1220 02/71
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`
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`3. Motivation To Combine The Admitted Prior Art With Boer ... 27
`
`4.
`
`5.
`
`6.
`
`7.
`
`Background on Modulation Methods ....................................... 31
`
`The Admitted Prior Art in the `580 Patent In View Of Boer
`Renders Claims 1, 2, 4-5, 10, 13, 19-22 Obvious ..................... 33
`
`APA In View Of Boer Renders Claims 49, 52-54 and 57
`Obvious ..................................................................................... 44
`
`APA In View Of Boer Renders Claims 58-59, 61, 62, 66,
`70, and 76-79 Obvious .............................................................. 49
`
`ii
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`DOCSLA-118536v1
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`Exhibit 1220 03/71
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`
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`I, David Goodman, declare:
`I.
`
`INTRODUCTION
` My name is David J. Goodman. I am currently a Professor Emeritus
`1.
`
`in the Department of Electrical and Computer Engineering of New York
`
`University (NYU).
`
`2.
`
`I have been retained by Samsung Electronics Co. Ltd., Samsung
`
`Electronics America, Inc., Samsung Telecommunications America, LLC, and
`
`Samsung Austin Semiconductor, LLC (“Petitioners”) to provide my expert
`
`opinions regarding U.S. Patent No. 8,023,580 (“the `580 patent”). More
`
`specifically, I have been asked to give my opinion about the meanings of certain
`
`terms of the `580 Patent claims, and to compare the `580 Patent claims to prior
`
`patents and publications. I submit this declaration in support of Petitioner’s
`
`petition for inter partes review of the `580 Patent.
`
`
`3.
`
`I am being compensated for my work in this matter. My
`
`compensation in no way depends upon the outcome of this proceeding.
`
`II. EXPERT QUALIFICATIONS AND CREDENTIALS
` My qualifications are set forth in my curriculum vitae, a copy of
`4.
`
`which is attached as Appendix A to this declaration, including lists of lists of my
`
`journal publications, books I have authored or edited, and my patents.
`
`
`5.
`
`I received a Bachelor’s degree at Rensselaer Polytechnic Institute in
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`1960, a Master’s degree at New York University in 1962, and a Ph.D. at Imperial
`
`College, University of London in 1967, all in electrical engineering.
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`DOCSLA-118536v1
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`Exhibit 1220 04/71
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`6.
`
`From 1967 to 1988, I was at Bell Laboratories, where I eventually
`
`became head of the Radio Research Department. In 1988, I moved to Rutgers, the
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`State University of New Jersey where I was a Professor of Electrical and Computer
`
`Engineering and Chairman of the Department of Electrical and Computer
`
`Engineering. In 1989, I founded the Wireless Information Network Laboratory
`
`(WINLAB) at Rutgers University. WINLAB was the first center of excellence at a
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`United States university focused on wireless telecommunications. In 1991,
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`WINLAB was designated the National Science Foundation Industry/University
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`Cooperative Research Center for Wireless Information Networks.
`
`7.
`
`
`
`In 1999, I joined NYU as Professor of Electrical and Computer
`
`Engineering and Head of the Department of Electrical and Computer Engineering.
`
`I was also Director of the Wireless Internet Centre for Advanced Technology
`
`(WICAT), with sites at NYU, University of Virginia, Auburn University, and
`
`Virginia Tech. WICAT was a National Science Foundation Industry/University
`
`Cooperative Research Center. In May 2008, I retired from my position of Professor
`
`of Electrical and Computer Engineering at NYU and was awarded my present title
`
`of Professor Emeritus.
`
`8.
`
`In 1995, I was a Research Associate at the Program on Information
`
`Resources Policy at Harvard University. In 1997, I was Chairman of the National
`
`Research Council Committee studying “The Evolution of Untethered
`
`Communications.” In 2006 and 2007, I was a Program Director at the National
`
`Science Foundation. From 2011 until October 2013, I was a member of the
`
`
`
`2
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`DOCSLA-118536v1
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`Exhibit 1220 05/71
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`National Research Council Committee studying “Management of Intellectual
`
`Property in Standard-Setting Processes.”
`
`9.
`
`I have been an expert in the field of networking and wireless
`
`telecommunications since 1979, when I began publishing papers and giving talks
`
`and lectures on the technology. I have extensive experience performing and
`
`managing research in telecommunications and digital signal processing. My
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`research in networking and wireless telecommunications has produced innovations
`
`covering frequency hopping, packet transmission and switching, network
`
`architecture, mobility management, and radio resources management.
`
` From the 1980s onward, I performed and directed a considerable body
`10.
`
`of research into communication networks in general and wireless communication
`
`networks in particular. The results of this research are documented in a large
`
`number of published papers.
`
` Some of the salient aspects of this research are invention of the Packet
`11.
`
`Reservation Multiple Access Media Access Control protocol, analysis of GPRS,
`
`the packet network overlay to the GSM cellular system, invention of a cellular
`
`packet switch, and new techniques for radio resource management in wireless data
`
`networks.
`
`
`12.
`
`In 2000 and 2001, I supervised the Master of Science research of
`
`Richard Lavery. This research is documented in the thesis “Throughput
`
`Optimization For Wireless Data Transmission” submitted by Lavery in 2001.
`
` Lavery describes a communication system capable of operating at
`13.
`
`different transmission speeds, with the speed adapted to changing channel quality.
`
`
`
`3
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`DOCSLA-118536v1
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`Exhibit 1220 06/71
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`Each transmission speed was characterized by an error correcting code and a
`
`packet size.
` Subsequently, Lavery and I collaborated with a Professor Goldsmith
`14.
`
`at Stanford and one of her students to extend Lavery’s results to systems capable of
`
`communication with different types of modulation, a subject previously studied by
`
`Professor Goldsmith.
`
`
`15.
`
`In 1989, I was one of the first professors to teach a university course
`
`in wireless mobile telecommunications and networking, and I continued to teach
`
`the subject to university students until my retirement in 2008. In the 1990s, I
`
`presented an in-house three-day short course to staff of many mobile telephone
`
`operating companies. I have lectured and published widely on the subject of
`
`wireless telecommunications. I have also consulted for many corporations in this
`
`field, including: Ericsson, Motorola, Lucent Technologies, and Nortel Networks.
`
`
`16.
`
`I have been elected a Member of the National Academy of
`
`Engineering, a Foreign Member of The Royal Academy of Engineering, a Fellow
`
`of the Institute of Electrical and Electronics Engineers (IEEE), and a Fellow of the
`
`Institution of Electrical Engineers. In 1997, I received the ACM/SIGMOBILE
`
`Award for “Outstanding Contributions to Research on Mobility of Systems Users,
`
`Data, and Computing.” In 1999, I won the RCR Gold Award for the best
`
`presentation at the Conference on Third Generation Wireless Communications.
`
`Three of my papers on wireless telecommunications have been cited as Paper of
`
`the Year by IEEE journals, and in 2003, I received the IEEE Avant Garde award
`
`for my pioneering work in wireless telecommunications.
`
`
`
`4
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`DOCSLA-118536v1
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`Exhibit 1220 07/71
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`17.
`
`I am author of the book “Wireless Personal Communications
`
`Systems,” published in 1997 by Addison Wesley, co-author, with Roy Yates, of
`
`“Probability and Stochastic Processes A Friendly Introduction for Electrical and
`
`Computer Engineers,” third edition published in 2004 by Wiley, and co-author
`
`with Hyung G. Myung of “Single Carrier FDMA: A New Air Interface for Long
`
`Term Evolution” published in 2014 by Wiley. I am co-editor of five other books
`
`on wireless telecommunications. I have been awarded eight United States patents
`
`and my publications include approximately 100 refereed papers.
`
`III. BASIS FOR OPINIONS AND MATERIALS REVIEWED
` The opinions set forth in my declaration are based on my personal
`18.
`
`knowledge gained from my education, professional experience, and on the review
`
`of the documents and information described in this declaration.
`
`
`19.
`
`In preparation of this declaration, I have studied
`
`
`
`
`
`a. U.S. Patent No. 8,023,580 (Ex. 1201);
`
`b. File History of U.S. Patent No. 8,023,580 and the patents from which
`
`the `580 patent claims priority, as well as the child patent;
`
`c. U.S. Patent No. 5,706,428 to Boer et al. “Boer;”
`
`d. P802.11 Draft Wireless LAN Medium Access Control (MAC) and
`
`Physical Layer (PHY) Specification, 23 May 1996;
`
`5
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`DOCSLA-118536v1
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`Exhibit 1220 08/71
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`e. IEEE Std 802.11-1997( Wireless LAN Medium Access Control (MAC)
`
`and Physical Layer (PHY) Specifications), IEEE Standards Board,
`
`Approved Jun. 26, 1997;
`
`f. Upender, “Communication Protocols for Embedded Systems,”
`
`Embedded Systems Programming, Vol. 7, Issue 11, November 1994.
`
`IV. LEGAL PRINCIPLES
`
`20.
`I understand that a claim is invalid if it is anticipated under 35 U.S.C.
`
`§ 102 or obvious under 35 U.S.C. § 103.
`
`A. Anticipation
`
`21.
`I understand that for a claim to be anticipated, every limitation of the
`
`claimed invention must be found in a single prior art reference, either expressly or
`
`inherently.
`
`
`22.
`
`I understand that anticipation and obviousness are determined on a
`
`claim-by-claim basis by comparing the claim, as construed by the Court, to the
`
`prior art.
`
`
`23.
`
`I understand that when a claim covers several alternative structures or
`
`elements, either generically or as alternatives, the claim is anticipated if any one of
`
`the structures or elements within the scope of the claim is disclosed in or practiced
`
`by a single prior art reference.
`
`24.
`
`I have been informed that if a single prior art reference discloses each
`
`and every element of an asserted claim, either expressly or inherently, it anticipates
`
`and therefore invalidates that claim under 35 U.S.C. § 102. For a claim element to
`
`
`
`6
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`DOCSLA-118536v1
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`Exhibit 1220 09/71
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`be inherently present in a prior art reference, I understand that the element must be
`
`“necessarily present” in the disclosed apparatus, system, product, or method, and
`
`not probably or possibly present. It is acceptable to examine evidence outside the
`
`prior art reference (extrinsic evidence) in determining whether a feature, while not
`
`expressly discussed in the reference, is necessarily present in it. In determining
`
`whether or not every one of the elements of the claimed invention is found in the
`
`item of prior art, one should take into account what a person of ordinary skill in the
`
`art would have understood from his examination of the particular item of prior art.
`
`25.
`
`I have been informed that there are several ways in which a patent
`
`claim can be invalid under 35 U.S.C. § 102. First, I have been informed that a
`
`patent claim is invalid under 35 U.S.C. § 102(a) if the invention described in the
`
`claim was known or used by others in the United States or was patented or
`
`described in a printed publication, such as a journal, magazine or newspaper
`
`article, anywhere in the world before the applicants’ invention date. I understand
`
`that the prior art reference must be evaluated for what it conveys to one of skill in
`
`the art.
`
` Second, I have been informed that a patent claim is invalid under 35
`26.
`
`U.S.C. § 102(b) if the invention was patented or described in a printed publication
`
`anywhere in the world or was in public use or on sale in the United States more
`
`than one year before the effective filing date/priority date of the patent in the
`
`United States.
`
` Third, I have been informed that a patent claim is invalid under 35 U.
`27.
`
`S. C. § 102(e) if the invention described in the claim was described in a patent by
`
`
`
`7
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`DOCSLA-118536v1
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`Exhibit 1220 10/71
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`
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`another inventor that was filed in the United States before the applicants’’
`
`invention date.
`
`28.
`
`I have been informed that, unless the patent owner comes forward
`
`with evidence proving that it is entitled to an earlier priority date for a patent, the
`
`date of the invention for purposes of Sections 102(a) and (e) is the filing date of the
`
`patent. I have been informed that to establish a priority date earlier than the filing
`
`date, Plaintiff must show (i) an earlier reduction to practice of the invention, or (ii)
`
`an earlier date of conception followed by a diligent attempt to reduce the invention
`
`to practice.
`
`
`29.
`
`I have been informed that for a document to constitute a “printed
`
`publication” under 35 U.S.C. § 102 and thus potentially qualify as prior art, that
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`document must be reasonably accessible to that portion of the public most likely to
`
`use it; the publication need only be reasonably available to interested members of
`
`the public. The date that a printed publication becomes available to the public is
`
`the date that it becomes prior art. I have been informed that any printed
`
`publication that was published more than one year before the application for the
`
`patent was filed will constitute prior art regardless of the alleged date of invention.
`
`30.
`
`I have also been informed that a prior art reference must only be
`
`shown to perform or disclose the steps of a method claim to anticipate that claim.
`
`The fact that there may be other circumstances where the prior art may not perform
`
`the recited step does not prevent the art from being anticipatory.
`
`
`31.
`
`I understand that the test for anticipation is essentially identical to the
`
`test for literal infringement, leading to the use of the phrase “that which infringes if
`
`
`
`8
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`DOCSLA-118536v1
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`Exhibit 1220 11/71
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`later anticipates if earlier.” In other words, if granting patent protection on the
`
`disputed claim would allow the patentee to exclude the public from practicing the
`
`prior art, then that claim is anticipated. I have been further informed that courts
`
`will not read limitations into the claims that are not there in order to prevent an
`
`anticipation - if the claims are broad enough to read onto the prior art, courts will
`
`find them anticipated.
`
`B. Obviousness
`
`I understand that a claim is invalid for obviousness if the differences
`32.
`
`between the subject matter sought to be patented and the prior art are such that the
`
`subject matter as a whole would have been obvious at the time the invention was
`
`made (or, in some cases, at the statutory “critical date” of the patent claim) to a
`person having ordinary skill in the art to which said subject matter pertains.1
`
`In determining whether a claimed invention is obvious, I understand
`33.
`
`that one should consider (i) the scope and content of the prior art, (ii) the level of
`
`ordinary skill in the relevant art, (iii) the differences between the claimed invention
`
`and the prior art, and (iv) whether the claimed invention would have been obvious
`
`to one of ordinary skill in the art in light of those differences.
`
`34.
`
`I understand that, historically, the applicable framework for assessing
`
`obviousness was whether there was a teaching, suggestion, or motivation, either
`
`
`1 I understand that the statutory “critical date” may be used for the obviousness
`determination where a reference was published more than one year before the
`
`earliest effective filing date of a patent application.
`
`
`
`9
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`DOCSLA-118536v1
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`Exhibit 1220 12/71
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`explicitly or implicitly, in the prior art to combine the teachings of the references.
`
`I have been informed that although the claimed subject matter can still be found
`
`obvious when that test is satisfied, the obviousness inquiry is actually broader and
`
`more flexible than that. One need not identify such teachings, suggestion, or
`
`motivation explicitly in the prior art. Instead, one can take into account the
`
`inferences, creative steps, common knowledge and common sense that a person of
`
`ordinary skill in the art would employ.
`
`
`35.
`
`I understand that if one of ordinary skill in the art can implement a
`
`predictable variation of an apparatus or method prompted by market forces or
`
`design incentives, such a variation is obvious. I understand that if a technique has
`
`been used to improve one device, and one of ordinary skill in the art would
`
`recognize that it would improve similar devices in the same way, using the
`
`technique is obvious unless its actual application is beyond ordinary skill. Stated
`
`differently, I understand that the proper question is whether one of ordinary skill,
`
`facing the wide range of needs created by developments in the field of endeavor,
`
`would have seen a benefit to combining the teachings of the prior art.
`
`
`36.
`
`I understand that where there is a design need or market pressure to
`
`solve a problem and there are a finite number of identified, predictable solutions, it
`
`is obvious to pursue the known options within the grasp of one of ordinary skill. In
`
`this situation, I understand that the result is likely the product not of innovation but
`
`of ordinary skill and common sense. I also understand that the combination of
`
`familiar elements according to known methods is likely to be obvious when it does
`
`no more than yield predictable results. I also understand that the obviousness
`
`
`
`10
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`DOCSLA-118536v1
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`Exhibit 1220 13/71
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`determination should consider whether a certain combination would have been
`
`obvious to try.
`
`37.
`
`I understand that contemporaneous development of similar variations
`
`of a device or method by other parties is indicative of obviousness. In establishing
`
`obviousness, I understand that one must avoid the “temptation to read into the prior
`
`art the teachings of the invention in issue” and “guard against slipping into the use
`
`of hindsight.” The prior art itself, and not the applicant’s achievement, must
`
`establish the obviousness of the combination.
`
`38.
`
`I understand that certain objective factors, sometimes known as
`
`“secondary considerations” must also be taken into account in determining whether
`
`a claimed invention would have been obvious. I understand that such secondary
`
`considerations as “commercial success, long felt but unsolved needs, [and] failures
`
`of others” may be evidence of nonobviousness. If such factors are present, they
`
`must be considered in determining obviousness. I understand that there must be a
`
`connection between the evidence showing any secondary considerations and the
`
`claimed invention if the evidence is to be given any weight in the obviousness
`
`inquiry.
`
` Commercial success: A strong showing of commercial
`success that can be attributed to the merits of the invention
`should be considered an indication of nonobviousness
`
` Copying: Evidence that an accused party copied the
`patented invention, as opposed to a prior art device, is an
`indication of nonobviousness.
`
`
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`11
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`DOCSLA-118536v1
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`Exhibit 1220 14/71
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` Long-standing problem or need: Evidence of a persistent
`problem or need in the art that was resolved by the patented
`invention is an indication of nonobviousness.
`
` Prior failure: Evidence that others have tried and failed to
`solve the problem or provide the need resolved by the
`claimed invention is an indication of nonobviousness.
`
` Licenses: The willingness of industry to license the patent
`at issue is an indication of nonobviousness, though
`consideration must be given to distinguishing respect for
`the invention from a desire to avoid litigation.
`
` Skepticism: Evidence that those of skill were skeptical as to
`the merits of the invention, or even taught away from the
`invention, are indications of nonobviousness.
`
` Prior litigation: Prior litigation may support an argument of
`commercial success or copying.
`
` Unexpected results: Evidence that those of skill in the art
`were surprised by the capabilities of the claimed invention
`is an indication of nonobviousness.
`
`It is my understanding that any assertion of the above indications must be
`
`accompanied by a nexus between the merits of the invention and the evidence
`
`offered, otherwise the evidence does not actually tend to show that the invention
`
`was nonobviousness.
`
`
`39.
`
`I understand that the person of ordinary skill is a hypothetical person
`
`who is presumed to be aware of all of the pertinent art. A person of ordinary skill
`
`also has an ordinary level of creativity. I understand that the person of ordinary
`
`
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`12
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`DOCSLA-118536v1
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`Exhibit 1220 15/71
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`skill is not an automaton, and may be able to fit together the teachings of multiple
`
`prior art references employing ordinary creativity and the common sense that
`
`familiar items may have obvious uses beyond their primary purposes. In many
`
`cases, a person of ordinary skill will be able to fit the teachings of multiple prior art
`
`together like the pieces of a puzzle. I understand that a patent which claims
`
`predictable uses of old elements according to their established functions to achieve
`
`predicable results may be found invalid as obvious. I understand that the
`
`perspective of one of ordinary skill in the art is used to determine obviousness, as
`
`well as anticipation, as discussed above.
`
`
`40.
`
`I understand that art that is analogous to the subject matter of the
`
`patent may properly be used as an obviousness reference. I understand that a
`
`reference is reasonably pertinent if, even though it may be in a different field from
`
`that of the inventor’s endeavor, it is one which, because of the matter with which it
`
`deals, logically would have commended itself to an inventor’s attention in
`
`considering his problem. When a work is available in one field of endeavor,
`
`design incentives and other market forces can prompt variations of it, either in the
`
`same field or a different one. If a person of ordinary skill can implement a
`
`predictable variation, then the invention is unpatentable as obvious. For example,
`
`if a technique has been used to improve one device, and a person or ordinary skill
`
`in the art would recognize that it would improve similar devices in the same way,
`
`using the technique is obvious unless its actual application is beyond his or her
`
`skill.
`
`
`
`13
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`DOCSLA-118536v1
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`Exhibit 1220 16/71
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`
`
` Often, it will be necessary for one addressing the obviousness of a 41.
`
`claim to look at interrelated teachings of multiple patents, references and prior art
`
`products; the effects of demands known to the design community or present in the
`
`marketplace; and the background knowledge possessed by a person of ordinary
`
`skill in the art, all in order to determine whether there was an apparent reason to
`
`combine the known elements in the fashion claimed by the patent at issue.
`
`
`42.
`
`I understand that an invention is obvious if one of ordinary skill in the
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`art, faced with the wide range of needs created by developments in the field, would
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`have found it obvious to employ the solution tried by the applicant to meet such
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`needs.
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`43.
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`In determining whether the subject matter of a patent claim is obvious,
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`neither the particular motivation nor the avowed purpose of the patentee controls.
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`What matters is the objective reach of the claim. If the claim extends to what is
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`obvious, it is invalid. One of the ways in which a patent’s subject matter can be
`
`proved obvious is by noting that there existed at the time of invention a known
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`problem for which there was an obvious solution encompassed by the patent’s
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`claims.
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`44.
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`In addition to the foregoing, it is my understanding that I should also
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`consider that: (a) a combination is obvious if it simply arranges old elements and
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`yields no more than one would expect from such an arrangement; (b) merely
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`substituting one element for another known in the field would be considered
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`obvious unless that substitution yields an unpredictable result; (c) when work is
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`available in one field of endeavor, design incentives and other market forces can
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`
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`14
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`DOCSLA-118536v1
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`Exhibit 1220 17/71
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`prompt variations, either in the same field or a different one. (If a person of
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`ordinary skill can implement a predictable design variation, and would see the
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`benefit from doing so, then that subject matter is obvious. In such a situation, the
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`successful use of that variation is not the product of innovation but ordinary skill
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`and common sense. For that same reason, if a technique has been used to improve
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`one device, and a person of ordinary skill would recognize that it would improve
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`similar devices in the same way, using that technique would be obvious unless the
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`actual application of that technique is beyond the artisan’s skill); and (d) any need
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`or problem known in the field of endeavor can provide a reason for combining the
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`prior art; the analysis should not be confined to whether the need or problem
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`identified by the patentee was known in the prior art.
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`C. Claim Interpretation in Inter Partes Review
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`I understand that claims in inter partes review are given their broadest
`45.
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`reasonable interpretation that is consistent with the patent specification. I
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`understand that in determining the broadest reasonable construction of a claim
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`term, one should consider subject matter that Patent Owner contends infringes the
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`claims or meanings for claim terms that Patent Owner has proposed in past or in
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`current litigation
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`V. THE TECHNOLOGY DESCRIBED IN THE `580 PATENT
` The `580 patent is directed to the “fields of data communications and
`46.
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`modulator/demodulators (modems), and, more particularly, to a data
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`communications system in which a plurality of modulation methods are used to
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`facilitate communication among a plurality of modem types.” Ex. 1201, `580
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`15
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`DOCSLA-118536v1
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`Exhibit 1220 18/71
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`patent, 1:19-23. The `580 patent identifies a problem with communications
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`systems where “communication between modems is generally unsuccessful unless
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`a common modulation method is used.” Id. at 1:45-47. The `580 patent describes
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`a “multipoint network architecture,” which the `580 patent asserts utilizes a
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`“master” modem and at least two “tributary” (or “trib”) modems. The `580 patent
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`notes that where “…one or more of the trib modems are not compatible with the
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`modulation method used by the master, those tribs will be unable to receive
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`communications from the master.” Id. at 1:54-61.
` The `580 patent asserts that “…communication systems comprised of
`47.
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`both high performance and low or moderate performance applications can be very
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`cost inefficient to construct.” Id. at 1:66-2:1. The `580 patent further asserts that
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`the solution used at the time to overcome incompatible modulation schemes was
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`the use of high performance modems for all users, which resulted in higher costs.
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`Id. at 2:8-16. Thus, the `580 patent asserts that “…what is sought, and what is not
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`believed to be provided by the prior art, is a system and method of communication
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`in which multiple modulation methods are used to facilitate communication among
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`a plurality of modems in a network, which have heretofore been incompatible.” Id.
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`at 2:17-20 (emphasis added).
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` The alleged invention of the `580 patent is a system like that shown in
`48.
`
`Figure 3, in which a master transceiver 64 is capable of transmitting and receiving
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`data having what the patent identifies as “type A” modulation and “type B”
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`modulation. Id. at 5:23-33. Master transceiver 64 can communicate with tribs,
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`e.g., trib 66, each of which communicates with either type A or type B modulation
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`16
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`DOCSLA-118536v1
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`Exhibit 1220 19/71
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`(shown as “type X” in Figure 3), but not both. Id. at 5:34-46. Figure 4 shows an
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`exemplary network in which master transceiver 64 can communicate with either
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`type A or type B modulation. Tribs 66a communicate with type A modulation,
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`while trib 66b communicates with type B modulation.\
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`49.
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`
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`In the example given in the specification, type A modulation is the
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`primary modulation method, which, as seen in Figure 5, means that the master
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`transceiver 64 initially transmits a sequence 104 using type A modulation. Id. at
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`5:57-67. If master transceiver 64 wishes to communicate with trib 66b, it can only
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`do so with type B modulation. To switch from type A modulation to type B
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`modulation, master transceiver 64 transmits a training sequence 106 to type A tribs
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`66a to notify them of an impending modulation scheme change. Id. at 6:3-6.
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`Then, master transceiver 64 sends a new transmission in sequence 108, this time
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`using type B modulation, containing a trib address as well as data intended for that
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`addressed trib. Id. at 6:8-15. Thereafter, master transceiver 64 transmits a trailing
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`sequence using type A modulation, which informs the tribs 66a that the type B
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`modulation transmission is complete. The type B trib 66b simply goes back to
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`ignoring type A transmissions after not receiving after not receiving a poll request
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`in the particular time interval defined for type B transmissions, or after
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`transmission of the particular quantity of data. Id. at 6:19-25.
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`50.
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` Master transceiver 64 can also communicate with a type A trib, for
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`example trib 66a, by transmitting a training sequence with type A modulation that
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`contains an address for a particular trib. The training sequence is followed by data,
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`which is then received by the addressed trib. Master transceiver 64 then transmits
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`
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`17
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`DOCSLA-118536v1
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`Exhibit 1220 20/71
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`a trailing sequence using type A modulation, which indicates the end of a
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`communication session. Id. at 6:49-58.
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`VI. THE ADMITTED PRIOR ART IN THE `580 PATENT
` The `580 patent specification makes it clear that “tribs” are the same
`51.
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`thing as “slaves.” As discussed above, the `580 patent describes a multipoint
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`network architecture using a