By:
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`IPR2014-00518
`U.S. Patent No. 8,023,580
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`Thomas Engellenner
`Pepper Hamilton LLP
`125 High Street
`19th Floor, High Street Tower
`Boston, MA 02110
`(617) 204-5100 (telephone)
`(617) 204-5150 (facsimile)
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`___________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`___________________
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`SAMSUNG ELECTRONICS CO. LTD.;
`SAMSUNG ELECTRONICS AMERICA, INC.;
`SAMSUNG TELECOMMUNICATIONS AMERICA, LLC; and
`SAMSUNG AUSTIN SEMICONDUCTOR, LLC;
`Petitioner
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`v.
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`REMBRANDT WIRELESS TECHNOLOGIES, LP
`Patent Owner
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`___________________
`
`Case No. IPR2014-00518
`Patent 8,023,580
`
`___________________
`
`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107
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`

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`TABLE OF CONTENTS
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`IPR2014-00518
`U.S. Patent No. 8,023,580
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`Page
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`TABLE OF AUTHORITIES ................................................................................ iii
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`TABLE OF EXHIBITS .......................................................................................... v
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`I.
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`INTRODUCTION ........................................................................................ 1
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`II. OVERVIEW OF THE ’580 PATENT ........................................................ 1
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`III. CLAIM CONSTRUCTION AND ORDINARY SKILL IN THE
`ART ................................................................................................................ 3
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`A. A Person Having Ordinary Skill In The Art ................................... 3
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`B.
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`Claim Construction ............................................................................ 4
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`IV. PETITIONER’S ALLEGED “ADMITTED PRIOR ART”
`CANNOT SERVE AS BASIS FOR INSTITUTING TRIAL ................. 15
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`V.
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`THERE IS NO REASONABLE LIKELIHOOD THAT ANY OF
`THE CHALLENGED CLAIMS ARE RENDERED OBVIOUS
`BY THE COMBINATION OF ALLEGED APA AND U.S.
`PATENT NO. 5,706,428 (“BOER”) .......................................................... 22
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`A.
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`B.
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`C.
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`D.
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`E.
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`Summary Of Boer ............................................................................ 22
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`The Petition Fails To Demonstrate Any Motivation To
`Combine The Alleged APA With Boer........................................... 26
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`The Petition Does Not Demonstrate A Reasonable
`Likelihood That Combination Of Alleged APA And Boer
`Renders Independent Claim 1 Obvious ......................................... 31
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`The Petition Does Not Demonstrate A Reasonable
`Likelihood That The Combination Of Alleged APA And
`Boer Renders Claim 2 Obvious ....................................................... 35
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`The Petition Does Not Demonstrate A Reasonable
`Likelihood That The Combination Of Alleged APA And
`Boer Renders Claim 19 Obvious ..................................................... 37
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`-i-
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`IPR2014-00518
`U.S. Patent No. 8,023,580
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`Page
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`F.
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`G.
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`H.
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`I.
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`J.
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`K.
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`L.
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`The Petition Does Not Demonstrate A Reasonable
`Likelihood That Combination of Alleged APA And Boer
`Renders Independent Claims 49, 52, And 53 Obvious ................. 39
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`The Petition Does Not Demonstrate A Reasonable
`Likelihood That The Combination Of Alleged APA And
`Boer Renders Claim 52 Obvious ..................................................... 41
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`The Petition Does Not Demonstrate A Reasonable
`Likelihood That Combination of Alleged APA And Boer
`Renders Claim 54 Obvious .............................................................. 42
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`The Petition Does Not Demonstrate A Reasonable
`Likelihood That Combination Of Alleged APA And Boer
`Renders Claim 57 Obvious .............................................................. 43
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`The Petition Does Not Demonstrate A Reasonable
`Likelihood That Combination of Alleged APA And Boer
`Renders Claims 58, 61, 62, 66, 70, and 76-79 Obvious ................. 44
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`The Petition Does Not Demonstrate A Reasonable
`Likelihood That Combination Of Alleged APA And Boer
`Renders Claim 59 Obvious .............................................................. 45
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`The Petition Does Not Demonstrate A Reasonable
`Likelihood That Combination Of Alleged APA And Boer
`Renders Claim 66 Obvious .............................................................. 47
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`VI. CONCLUSION ........................................................................................... 49
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`IPR2014-00518
`U.S. Patent No. 8,023,580
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`TABLE OF AUTHORITIES
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`
`CASES
`3M Innovative Props. Co. v. Avery Dennison Corp., 350 F.3d 1365 (Fed.
`Cir. 2003) .............................................................................................................. 8
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`Page(s)
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`Abbott Labs. v. Novopharm Ltd., 323 F.3d 1324 (Fed. Cir. 2003) .......................... 11
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`Advanced Fiber Techs. Trust v. J&L Fiber Servs., 674 F.3d 1365 (Fed. Cir.
`2012) ..................................................................................................................... 9
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`CCS Fitness v. Brunswick Corp., 288 F.3d 1359 (Fed. Cir. 2002) ........................... 9
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`CFMT, Inc. v. Yieldup Intern. Corp., 349 F.3d 1333 (Fed. Cir. 2003) ................... 22
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`Cisco Systems, Inc. v. AIP Acquisition, LLC, 2014 WL 2364452 (Patent Tr.
`& App. Bd., May 27, 2014) .................................................................................. 9
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`Constant v. Adv. Micro-Devices, Inc., 848 F.2d 1560 (Fed. Cir. 1988) ............ 18, 19
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`Ex Parte Mindrum, Appeal 2010-010342, 2013 WL 1332716 (Patent Tr. &
`App. Bd. Feb. 27, 2013) ...................................................................................... 16
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`Grain Processing Corp. v. American-Maize Prods. Co., 840 F.2d 902 (Fed.
`Cir. 1988) ............................................................................................................ 30
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`Innogenetics, N.V. v. Abbott Labs, 512 F.3d 1363 (Fed. Cir. 2008) ....................... 29
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`In re Buszard, 504 F.3d 1364 (Fed. Cir. 2007) .......................................................... 3
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`In re Cortright, 165 F.3d 1353 (Fed. Cir. 1999) ........................................................ 3
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`In re Fout, 675 F.2d 297 (C.C.P.A. 1982) ......................................................... 18, 19
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`In re Linnert, 309 F.2d 498 (C.C.P.A. 1962) ........................................................... 19
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`In re Nomiya, 509 F.2d 566 (C.C.P.A. 1975) ........................................ 16, 18, 19, 21
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`In re NTP, Inc., 654 F.3d 1279 (Fed. Cir. 2011) ..................................................... 29
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`In re Suitco Surface, Inc., 603 F.3d 1255 (Fed. Cir. 2010) ....................................... 3
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`-iii-
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`IPR2014-00518
`U.S. Patent No. 8,023,580
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`Page(s)
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`InTouch Tech., Inc. v. VGO Comm’s, Inc., 2014 U.S. App. LEXIS 8745
`(Fed. Cir. May 9, 2014) ...................................................................................... 30
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`Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342 (Fed. Cir.
`2012) ............................................................................................................. 29, 30
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`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) .......................................... 30-32
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`Pharmastem Therapeutics, Inc. v. Viacell, Inc., 491 F.3d 1342 (Fed. Cir.
`2007) ............................................................................................................. 18, 19
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`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) ............................... 8, 12, 13
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`Reading & Bates Construction Co. v. Baker Energy Resources Corp., 748
`F.2d 645 (Fed. Cir. 1984) ............................................................................. 16, 17
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`Riverwood Int’l Corp. v. R.A. Jones & Co., 324 F.3d 1346
`(Fed. Cir. 2003) ............................................................................................. 16-19
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`Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996) ................ 5, 11
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`Wowza Media Systems, LLC et al. v. Adobe Systems Inc., IPR2013-00054,
`Paper 12 .............................................................................................................. 29
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`STATUTES
`35 U.S.C. § 313 .......................................................................................................... 1
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`OTHER AUTHORITIES
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`37 C.F.R. § 42.100(b) ................................................................................................ 3
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`37 C.F.R. § 42.107 ..................................................................................................... 1
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`77 Fed. Reg. 48,756 (Aug. 14, 2012) ........................................................................ 3
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`Manual of Patent Examining Procedure (MPEP) § 2111 .......................................... 3
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`Manual of Patent Examining Procedure (MPEP) § 2129 ........................................ 16
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`Manual of Patent Examining Procedure (MPEP) § 2141 .......................................... 4
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`-iv-
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`IPR2014-00518
`U.S. Patent No. 8,023,580
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`TABLE OF EXHIBITS
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`Exhibit No.
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`Exhibit Description
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`2201
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`2202
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`2203
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`2204
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`2205
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`2206
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`2207
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`U.S. Provisional Patent Application No. 60/067,562, dated
`December 5, 1997.
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`Proakis, John G. and Masoud, Salehi, COMMUNICATION
`SYSTEMS ENGINEERING 438-44 (Prentice Hall, Inc. 1994)
`(“Proakis I”).
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`Proakis, John G. and Masoud, Salehi, COMMUNICATION
`SYSTEMS ENGINEERING 643-44 (Prentice Hall, Inc. 1994)
`(“Proakis II”).
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`Gast, Matthew S., 802,11 WIRELESS NETWORKS, THE
`DEFINITIVE GUIDE 182-185 (O’Reilly & Assocs., Inc. 2002).
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`MODERN DICTIONARY OF ELECTRONICS, SIXTH ED., REVISED
`AND UPDATED 932 (Butterworth-Heinemann 1997).
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`COMPREHENSIVE DICTIONARY OF ELECTRICAL ENGINEERING
`397 (CRC Press LLC 1999).
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`Amended Petition for Inter Partes Review of U.S. Patent
`No. 8,023,580, Case IPR2014-00515, Paper 4 (April 3,
`2014).
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`-v-
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`IPR2014-00518
`U.S. Patent No. 8,023,580
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`PATENT OWNER PRELIMINARY RESPONSE
`UNDER 37 C.F.R. § 42.107
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`Patent Owner Rembrandt Wireless Technologies, LP (“Rembrandt” or
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`“Patent Owner”) hereby submits this Preliminary Response to the Petition filed by
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`Samsung Electronics Co. Ltd., Samsung Electronics America, Inc., Samsung
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`Telecommunications America, LLC, and Samsung Austin Semiconductor, LLC
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`(collectively, “Petitioner”) seeking inter partes review of U.S. Patent No.
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`8,023,580 (“the ’580 Patent”). This filing is timely under 35 U.S.C. § 313 and 37
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`C.F.R. § 42.107, as it is being filed within three months of the mailing date of the
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`Notice of Filing Date Accorded to Petition (Paper 3), mailed April 3, 2014.
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`I.
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`INTRODUCTION
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`The Petition fails to show a reasonable likelihood of prevailing on any of the
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`challenged claims of the ’580 Patent. Accordingly, Patent Owner respectfully
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`requests that the Patent Trial and Appeal Board (“the Board”) deny inter partes
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`review as to all grounds set forth in the Petition.
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`II. OVERVIEW OF THE ’580 PATENT
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`Petitioner challenges Claims 1, 2, 4-5, 10, 13, 19-22, 49, 52-54, 57-59, 61,
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`62, 66, 70, and 76-79 of the ’580 Patent, of which Claims 1, 49, 54, and 58 are
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`independent.
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`IPPR2014-000518
`UU.S. Patent
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`No. 8,0233,580
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`TThe ‘580 paatent to invventor Gorrdon Bremeer claims ppriority to aa provisionnal
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`applicattion filed oon Decembber 5, 19977. The ‘5800 patent diiscloses a ssystem in
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`which nnetwork deevices may communiccate with oother netwoork devicees accordinng to
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`a master/slave relaationship uusing differrent types
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`of modulaation methoods. (Ex.
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`1301, AAbstract).
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`TThe use of mmultiple tyypes of moodulation mmethods in
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`a master-sslave systemm as
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`odulation ttype
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`taught bby the ‘5800 Patent cann, for exammple, permmit selectionn of the m
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`best suited for a particular appplication.. (Ex. 130
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`1, 1:66-2:333). Anno
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`tated Figurre 4
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`shows aan embodimment of thee patented technologyy where soome devicees in the
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`networkk communiicate usingg one type oof modulattion methood (e.g., ammplitude
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`modulattion), whille other devvices commmunicate uusing a diffferent typee of
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`modulattion methood (e.g., freequency mmodulation)):
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`III. CLAIM CONSTRUCTION AND ORDINARY SKILL IN THE ART
`In an inter partes review, claim terms in an unexpired patent are interpreted
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`IPR2014-00518
`U.S. Patent No. 8,023,580
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`according to their broadest reasonable construction. 37 C.F.R. § 42.100(b); Office
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`Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). “The
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`broadest reasonable interpretation of the claims must also be consistent with the
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`interpretation that those skilled in the art would reach. In re Cortright, 165 F.3d
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`1353, 1359, 49 USPQ2d 1464, 1468 (Fed. Cir. 1999). . . . [T]he focus of the
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`inquiry regarding the meaning of a claim should be what would be reasonable from
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`the perspective of one of ordinary skill in the art. In re Suitco Surface, Inc., 603
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`F.3d 1255, 1260 (Fed. Cir. 2010); In re Buszard, 504 F.3d 1364 (Fed. Cir. 2007).”
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`Manual of Patent Examining Procedure (MPEP) § 2111.
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`A. A Person Having Ordinary Skill In The Art
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`Petitioner alleges, in a conclusory fashion, that a hypothetical person of
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`ordinary skill in the field of the ‘580 Patent would have had “a Master’s Degree in
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`Electrical Engineering that included coursework in communications systems and
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`networking, and at least five years of experience designing network
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`communication systems.” (Paper 4 at 9.) Petitioner provides no rationale for its
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`definition, including why a Master’s degree in electrical engineering is necessary
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`or why “at least five years of experience” is needed to qualify as one of ordinary
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`skill in the art. Petitioner’s proposed definition is arbitrary and should be rejected.
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`Petitioner’s definition also should be rejected because its use of the open-
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`IPR2014-00518
`U.S. Patent No. 8,023,580
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`ended term “at least” would include persons who are far over-qualified to be
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`considered of “ordinary skill” in the art. Surely, someone with the proposed
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`Master’s degree and more than 15 years of practical experience, for example, is
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`not “a person of ordinary skill in the art” because that person would possess a
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`much higher level of understanding of the technology disclosed in the ‘580 patent
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`than a similar person with the five years of experience, yet such a person would
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`meet Petitioner’s definition.
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`Should a trial be instituted, Patent Owner reserves the right to present an
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`alternative definition for a person of ordinary skill in the art, along with additional
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`evidence as to the various factors to be taken into account in determining the level
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`of ordinary skill such as the type of problems encountered in the art at the time of
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`the invention, the sophistication of the technology, and the education level and
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`professional capabilities of active workers in the field. MPEP §2141(II)(C).
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`B. Claim Construction
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`Petitioner has proposed construction of the following terms:
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`(a) “first modulation method” (Claims 1, 2, 13, 19, 21, 22, 49, 54, 58,
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`59, 70, 76, 78, 79) and “second modulation method” (Claims 1, 13,
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`20, 22, 49, 54, 58, 70, 77, 79);
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`-4-
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`(b) “at least two types of modulation methods” (Claims 1 and 58);
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`IPR2014-00518
`U.S. Patent No. 8,023,580
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`(c) “master” (Claims 1, 2, 10, 11, 12, 49, 54, 58, 59, 66, 68, 69); and
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`(d) “slave” (Claims 1, 2, 10, 11, 58, 59, 66, 68).
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`1.
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`“First Modulation Method” and “Second Modulation Method”
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`Claim Term Patentee’s Construction
`first
`“a first method for varying one or
`modulation
`more characteristics of a carrier in
`method
`accordance with information to be
`communicated.”
`“a second method for varying one
`or more characteristics of a carrier
`in accordance with information to
`be communicated.”
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`second
`modulation
`method
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`Petitioner’s Construction
`“a process of varying
`characteristic(s) of a carrier
`wave that is different from a
`second modulation method.”
`“a process of varying
`characteristic(s) of a carrier
`wave that is different from a
`first modulation method.”
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`With respect to the term “modulation,” Petitioner does not rely on the ‘580
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`specification but, instead, relies on an IEEE dictionary to contend that the term
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`means “[t]he process by which some characteristic of a carrier is varied in
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`accordance with a modulating wave.” (Paper 4 at 11.) But Petitioner makes no
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`attempt to examine the use of the term “modulate” in the specification of the ‘580
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`patent or to compare their suggested definition to the ‘580 specification. The
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`specification, however, “is always highly relevant to the claim construction
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`analysis. Usually, it is dispositive; it is the single best guide to the meaning of a
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`disputed term.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.
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`Cir. 1996).
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`IPPR2014-000518
`UU.S. Patent
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`No. 8,0233,580
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`AA person off ordinary skill wouldd understannd that a ““modulatioon method”” is
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`a techniique for vaarying the ccharacterisstics of a caarrier, suchh as its ampplitude,
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`frequenncy and/or pphase. A pperson of oordinary skkill also woould underrstand that
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`the
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`characteeristics aree not variedd randomlyy or indiscrriminately,, as Petitiooner impliccitly
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`proposees, but insteead are varried in a prredeterminned mannerr to conveyy informatiion,
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`so that mmeaningfuul communiication cann occur. Inndeed, the
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`‘580 patennt illustratees
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`this in FFigures 5, 66, and 7 annd at 5:57-77:3.
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`TTo illustratee, the figurre below shhows one ttype of moodulation, ccalled
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`“amplituude modullation,” in
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`which the amplitude
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` characteriistic of the
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` carrier (i.ee.,
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`its heighht) is varieed in accorddance withh other infoormation too produce
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`a “modulaated
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`carrier”:
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`Thus, foor examplee, when thee informatiion to be coommunicaated is a 0 bbit, the carrrier
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`is “moddulated” byy decreasinng its heighht/amplitudde. Conve
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`rsely, wheen the
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`information to be communicated is a 1 bit, the carrier is “modulated” by increasing
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`IPR2014-00518
`U.S. Patent No. 8,023,580
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`its height/amplitude.
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`The specification of the ‘580 patent uses the term “modulation method”
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`consistent with this plain and ordinary meaning when, for example, it refers to
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`modulation methods “such as quadrature amplitude modulation (QAM), carrier
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`amplitude and phase (CAP) modulation, or discrete multitone
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`(DMT)
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`modulation.” (Ex. 1201, 2:1-8; see also id., 5:17-22.) As described in the
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`specification (Figures 5, 6, and 7 at 5:57-7:3), the different modulation methods
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`are used to transmit information to be communicated. Because none of the
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`intrinsic evidence departs from the plain and ordinary meaning, the Board should
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`construe the term “first modulation method” as “a first method for varying one or
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`more characteristics of a carrier in accordance with information to be
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`communicated” and the term “second modulation method” as “a second method
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`for varying one or more characteristics of a carrier in accordance with information
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`to be communicated.” Patent Owner’s constructions are consistent with the
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`understanding of those of ordinary skill, find support in the intrinsic evidence,
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`and follow a well-defined patent claiming convention.
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`There does not appear to be any dispute that the claims of the ‘580 patent
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`adhere to the well-established patent drafting convention where “first” and
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`“second” merely identify repeated instances of a similarly named claim element.
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`-7-
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`3M Innovative Props. Co. v. Avery Dennison Corp., 350 F.3d 1365, 1371 (Fed.
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`IPR2014-00518
`U.S. Patent No. 8,023,580
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`Cir. 2003) (noting that “[t]he use of the terms ‘first’ and ‘second’ is a common
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`patent-law convention to distinguish between repeated instances of an element or
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`limitation.”). For example, claim 58 of the ‘580 patent uses “first” and “second”
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`to identify a particular “modulation method,” as well as a particular “sequence.”
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`(Ex. 1201, 11:51-12:10.) Without the “first” and “second” identifiers, the claim
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`would be confusing.
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`Other claims of the ‘580 patent likewise use the “first” and “second”
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`convention to identify objects with similar names: “first” and “second” data (‘580
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`Claims 23, 25, 32, 34); “first” and “second” information (‘580 Claims 1, 49, 54;
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`“first” and “second” sequences (‘580 Claims 1, 5, 40, 44, 49, 54, 58, 62); “first”
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`and “second” logic (‘580 Claims 49, 54); “first” and “second” types of receivers
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`(‘580 Claims 70, 71, 72). Thus, the claims do not import any special meaning to
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`“first” and “second” modulation methods. Phillips v. AWH Corp., 415 F.3d
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`1303, 1313 (Fed. Cir. 2005) (“[T]he words of a claim ‘are generally given
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`their ordinary and customary meaning.’”).
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`“At Least Two Types of Modulation Methods”
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`IPR2014-00518
`U.S. Patent No. 8,023,580
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`2.
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`Claim Term
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`Patentee’s Construction
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`at least two types of
`modulation
`methods
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`“at least two different families
`of modulation techniques”
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`Petitioner’s Construction
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`“at least two incompatible
`processes of varying
`characteristic(s) of a carrier
`wave”
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`
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`Petitioner’s proposed construction ignores the specification and prosecution
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`history of the ‘580 patent and should be rejected. Notably, Petitioner provides no
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`case law to attempt to support its proposition that the patentee’s statements during
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`prosecution defining the meaning of the claim terms should be ignored for
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`purposes of claim construction. (Paper 4 at 10.) The law in an inter partes review
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`is clear: a “claim term will not receive its ordinary meaning if the patentee acted
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`as his own lexicographer and clearly set forth a definition of the disputed claim
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`term in either the specification or prosecution history.” Cisco Systems, Inc. v. AIP
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`Acquisition, LLC, 2014 WL 2364452, at *6 (Patent Tr. & App. Bd., May 27,
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`2014) (emphasis added) quoting CCS Fitness v. Brunswick Corp., 288 F.3d 1359,
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`1366 (Fed. Cir. 2002); accord Advanced Fiber Techs. Trust v. J&L Fiber Servs.,
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`674 F.3d 1365, 1374 (Fed. Cir. 2012). Thus, the patentee’s definition in either the
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`specification or prosecution history governs.
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`The initial claims filed with the ‘580 patent application only required the
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`modulation methods to be “different.” (Ex. 1208 at RIP 22-23, 27-28 (“1…
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`wherein the second method is different than the first modulation method”); see
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`IPR2014-00518
`U.S. Patent No. 8,023,580
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`also Claims 19, 58, 72.) Certain claims were subsequently amended to further
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`specify that the modulation methods were of different “types”:
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`1. (Currently Amended) A communication system device …
`comprising:
`… at least two types of modulation methods, wherein the at least
`two types of modulation methods comprise a first modulation method
`and a second modulation method, wherein the second modulation
`method is of a different type than the first modulation method….”
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`
`(Ex. 1 2 0 9 at RIP 3523) (emphasis in original, underlining indicates
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`additions, while strike-throughs indicate deletions).)
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`In the Remarks section of the same Office Action Response, the applicant
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`defined what the claim amendments meant by different “types” of modulation
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`methods:
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`Applicant has further amended claims 1-2, 9-15, 18, 37-38, and 45-46
`with additional recitations to more precisely claim the subject-
`matter. For example, the language of independent claim 1 has been
`clarified to refer to two types of modulation methods, i.e., different
`families of modulation techniques, such as the FSK family of
`modulation methods and the QAM family of modulation methods.
`
`
`(Ex. 1209 at 20 (bold and underlining added, italics in original.) Thus, the
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`applicant expressly defined different “types” of modulation methods as Patentee
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`IPR2014-00518
`U.S. Patent No. 8,023,580
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`proposes: “different families of modulation techniques.”
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`The Federal Circuit has repeatedly held that an inventor can act as his own
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`lexicographer if he uses a “special definition of the term [that] is clearly stated in
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`the patent specification or file history.” Vitronics, 90 F.3d at 1582. This claim
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`construction axiom that an inventor can act as his own lexicographer has
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`spawned a line of cases that is dispositive. Those cases hold that a patent
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`specification’s use of the letters “i.e.” (Latin for “that is”) in conjunction with a
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`claim term typically connotes a binding definition. The seminal case is Abbott
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`Labs. v. Novopharm Ltd., 323 F.3d 1324 (Fed. Cir. 2003).
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`In Abbott, the patentee (Abbott) argued for a definition that was different
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`than it had given in an “i.e.” parenthetical in the specification, while the accused
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`infringer argued that the “i.e.” definition was controlling. The Federal Circuit
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`held that “i.e.” defined the claim term “co-micronization,” which was “in fact
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`explicitly defined at column 1, lines 35-38, of the ’726 patent.” Id. at 1330.
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`Based on this language, the Federal Circuit found that “the patentee has
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`‘chosen to be his own lexicographer.’” Id.
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`The express definition during prosecution gives weight to the word “type”
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`in the claims of the ‘580 patent The specification uses the word “type” consistent
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`with the express “family” definition by referring to groups of similar objects with
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`common characteristics as being of the same “type.” (Ex. 1201, 5:47-6:35)
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`IPR2014-00518
`U.S. Patent No. 8,023,580
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`(groups of tribs that can demodulate at least modulation method A are termed
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`“type A tribs,” while groups of tribs that can demodulate at least modulation
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`method B are termed “type B tribs 66b.”).) Therefore, in view of the specification
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`and prosecution history of the ‘580 patent, the broadest reasonable construction of
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`the term “at least two types of modulation methods” is “at least two different
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`families of modulation techniques.”
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`3.
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`“Master” and “Slave”
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`Claim Term Patentee’s Construction
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`Petitioner’s Construction
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`“a device which controls or
`polls other transceivers”
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`“a device controlled by
`commands from a master”
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`Master
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`Slave
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`“a device which controls all
`communications with other devices
`(i.e., slaves) in a network”
`“a device whose network
`communications are controlled by a
`master”
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`Petitioner takes the position that the terms “master” and “slave” should be
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`given their plain and ordinary meanings. (Paper 4 at 13-14.) Petitioner ignores
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`the claims and specification of the ‘580 patent and relies solely on extrinsic
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`evidence from the Dictionary of Communications Technology. Id. The Federal
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`Circuit in Phillips made clear that a disputed claim term cannot be viewed in a
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`vacuum, but rather must be interpreted in the context of the patent, including the
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`claims and the specification. Phillips, 415 F.3d at 1313, 1316-17. Indeed, the
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`Federal Circuit emphasized that the specification “is the single best guide to the
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`IPR2014-00518
`U.S. Patent No. 8,023,580
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`meaning of a disputed term,” holding that in construing a claim, a court should
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`focus “at the outset on how the patentee used the claim terms in the claims,
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`specification, and prosecution history, rather than starting with a broad definition
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`and whittling it down.” Id. at 1315, 1321. Petitioner’s proposed constructions for
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`“master” and “slave” in a vacuum, divorced from the claims and specification of
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`the ‘580 patent are improper and should be rejected by the Board.
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`The ‘580 patent is replete with usage of the terms “master” and “slave” in
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`the context of the master/slave relationship. For example, the device disclosed in
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`the ‘580 patent includes “a transceiver capable of acting as a master according to a
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`master/slave relationship in which communication from a slave to a master occurs
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`in response to communication from the master to the slave.” (Ex. 1201, Abstract.)
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`“[A] master controls the initiation of its own transmission to the tribs and permits
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`transmission from a trib only when that trib has been selected.” (Id. at 4:7-9.)
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`Similarly, in the Summary of the Invention section of the ‘580 patent, it states
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`that:
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`a device may be capable of communicating according to a
`master/slave relationship in which a communication from a
`slave to a master occurs in response to a communication
`from the master to the slave. The device may include a
`transceiver in the role of the master for sending transmissions
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`IPR2014-00518
`U.S. Patent No. 8,023,580
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`modulated using at least two types of modulation methods, for
`example a first modulation method and a second modulation
`method
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`(Id. at 2:24-29.) (emphasis added).
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`Furthermore, independent claims 1 and 58 of the ‘580 patent are directed to
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`communication devices capable of communicating according to a master/slave
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`relationship. The preambles of those claims state that in a master/slave
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`relationship, “a slave communication from a slave to a master occurs in response
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`to a master communication from the master to the slave” (Claim 1) and “a slave
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`message from a slave to a master occurs in response to a master message from the
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`master to the slave” (Claim 58). Id.
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`Consistent with the usage of master/slave in the ‘580 patent, the
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`Comprehensive Dictionary of Electrical Engineering, likewise, defines “master”
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`as “the system component responsible for controlling a number of others (called
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`slaves).” (Ex. 2206 at 397 (emphasis added).) The Modern Dictionary defines
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`““slave” as a “component in a system that does not act independently, but only
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`under the control of another similar components.” (Ex. 2205 at 932 (emphasis
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`added).)
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`By contrast, Petitioner’s prosposed construction of “master” would be
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`satisfied by a device that merely performed polling, even if it failed to control
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`communications with a slave. Such a construction is inconsistent with the
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`IPR2014-00518
`U.S. Patent No. 8,023,580
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`specification and should be rejected. For example, the ‘580 patent discloses that
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`“…a master controls the initiation of its own transmission to the tribs and permits
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`transmission from a trib only when that trib has been selected.” (Ex. 1201, 4:7-9).
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`Petitioner’s proposed constructions for “master” and “slave” should be
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`rejected because they are inconsistent with the usage of these terms in the ‘580
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`patent.
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`IV. PETITIONER’S ALLEGED “ADMITTED PRIOR ART” CANNOT
`SERVE AS BASIS FOR INSTITUTING TRIAL
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`The portions of the ‘580 Patent cited in the Petition do not qualify as
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`Admitted Prior Art. Petitioner’s argument that portions of the ‘580 specification
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`are admitted prior art fails as a matter of law. Petitioner has failed to make any
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`showing that the alleged admitted prior art is a work of another, which is a
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`prerequisite to finding prior art by admission. Simply put, since Petitioner has not
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`met (and, as explained below, cannot meet) its burden of showing that the alleged
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`admitted prior art is the work of another, and Petitioner has presented no statutory
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`basis rendering the cited portions of the specification prior art, the Board should
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`reject Petitioner’s reliance on the alleged admitted prior art.
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`IPR2014-00518
`U.S. Patent No. 8,023,580
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`The Doctrine Of Admitted Prior Art Is Not Applicable To
`An Inventor’s Own Work
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`1.
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`The law is clear and well-settled that the doctrine of prior art by admission
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`“is inapplicable when the subject matter at issue is the inventor’s own work.”
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`Riverwood Int’l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1354 (Fed. Cir. 2003).
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`As the Federal Circuit has explained, “[o]ne’s own work may not be considered
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`prior art in the absence of a statutory basis, and a patentee should not be
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`‘punished’ for being as inclusive as possible and referencing his own work… .”
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`Riverwood Int’l Corp., 324 F.3d at 1355 (emphasis added) (citing In re Nomiya,
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`509 F.2d 566, 571 n.5 (C.C.P.A. 1975)); see also Reading & Bates Construction
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`Co. v. Baker Energy Resources Corp., 748 F.2d 645 (Fed. Cir. 1984) (holding that
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`patentee’s discussion in the “Summary of the Prior Art” did not constitute an
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`admission that one’s own prior work is prior art); see also Ex Parte Mindrum,
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`Appeal 2010-010342, 2013 WL 1332716, at *2 (Patent Tr. & App. Bd. Feb. 27,
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`2013) (“Riverwood, cited by Appellant in b