Paper 47
`Trials@uspto.gov
`571-272-7822
`
`Date Entered: September 17, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO. LTD., SAMSUNG ELECTRONICS
`AMERICA, INC., SAMSUNG TELECOMMUNICATIONSAMERICA,
`LLC, and SAMSUNG AUSTIN SEMICONDUCTOR, LLC,
`Petitioner,
`
`v.
`
`REMBRANDT WIRELESS TECHNOLOGIES, LP,
`Patent Owner.
`____________
`
`Case IPR2014-00518
`Patent 8,023,580 B2
`____________
`
`
`
`
`Before JAMESON LEE, HOWARD B. BLANKENSHIP, and
`JUSTIN BUSCH, Administrative Patent Judges.
`
`
`BLANKENSHIP, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`Date Entered: September 17, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO. LTD., SAMSUNG ELECTRONICS
`AMERICA, INC., SAMSUNG TELECOMMUNICATIONSAMERICA,
`LLC, and SAMSUNG AUSTIN SEMICONDUCTOR, LLC,
`Petitioner,
`
`v.
`
`REMBRANDT WIRELESS TECHNOLOGIES, LP,
`Patent Owner.
`____________
`
`Case IPR2014-00518
`Patent 8,023,580 B2
`____________
`
`
`
`
`Before JAMESON LEE, HOWARD B. BLANKENSHIP, and
`JUSTIN BUSCH, Administrative Patent Judges.
`
`
`BLANKENSHIP, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`IPR2014-00518
`Patent 8,023,580 B2
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`
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`I. BACKGROUND
`
`
`
`
`
`Samsung Electronics Co. Ltd., Samsung Electronics America, Inc.,
`
`Samsung Telecommunications America, LLC, and Samsung Austin
`
`Semiconductor, LLC (collectively, “Petitioner”) filed a request for inter
`
`partes review of claims 1, 2, 4, 5, 10, 13, 19–22, 49, 52–54, 57–59, 61, 62,
`
`66, 70, and 76–79 of U.S. Patent No. 8,023,580 B2 (“the ’580 patent,” Ex.
`
`1201) under 35 U.S.C. §§ 311–319. Paper 4 (“Petition” or “Pet.”) The
`
`Board instituted an inter partes review of claims 1, 4, 5, 10, 13, 20–22, 54,
`
`57, 58, 61, 62, 66, 70, and 76–79 on an asserted ground of unpatentability
`
`for obviousness. Paper 16 (“Dec. on Inst.”).
`
`
`
`Subsequent to institution, Patent Owner Rembrandt Wireless
`
`Technologies, LP, filed a patent owner response (Paper 25, “PO Resp.”).
`
`Petitioner filed a reply to the Patent Owner Response (Paper 32, “Pet.
`
`Reply”).
`
`Oral hearing was held on April 24, 2015.1
`
`The Board has jurisdiction under 35 U.S.C. § 6(c). This final written
`
`decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`
`For the reasons that follow, we determine that Petitioner has shown by
`
`a preponderance of the evidence that claims 1, 4, 5, 10, 13, 20–22, 54, 57,
`
`58, 61, 62, 66, 70, and 76–79 of the ’580 patent are unpatentable.
`
`
`
`A. Related Proceedings
`
`According to Petitioner, the ’580 patent is involved in the following
`
`lawsuit: Rembrandt Wireless Technologies, LP v. Samsung Electronics Co.,
`
`No. 2:13-cv-00213 (E.D. Tex. 2013). Pet. 2. The ’580 patent also has been
`
`
`1 The record includes a transcript of the oral hearing. Paper 46 (“Tr.”).
`2
`
`
`
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`IPR2014-00518
`Patent 8,023,580 B2
`
`
`challenged in the following cases: Samsung Electronics Co. v. Rembrandt
`
`
`
`Wireless Technologies, LP, IPR2014-00514 (not instituted); Samsung
`
`Electronics Co. v. Rembrandt Wireless Technologies, LP , IPR2014-00515
`
`(not instituted); and Samsung Electronics Co. v. Rembrandt Wireless
`
`Technologies, LP, IPR2014-00519 (final decision issuing concurrently).
`
`
`
`B. The ’580 Patent
`
`The ’580 patent issued from an application filed August 19, 2009,
`
`which claimed priority under 35 U.S.C. § 120 through a chain of intervening
`
`applications to an application filed December 4, 1998, and which further
`
`claimed priority under 35 U.S.C. § 119 to a provisional application filed
`
`December 5, 1997.
`
`The technical field of the patent relates to data communications and
`
`modulators/demodulators (modems) and in particular to a data
`
`communications system in which a plurality of modems uses different types
`
`of modulation in a network. Ex. 1201, col. 1, ll. 19–23; col. 1, l. 56 – col. 2,
`
`l. 20.
`
`
`
`C. Illustrative Claim
`
`1. A communication device capable of communicating
`according to a master/slave relationship in which a slave
`communication from a slave to a master occurs in response to a
`master communication from the master to the slave, the device
`comprising:
`
` a
`
` transceiver, in the role of the master according to the
`master/slave relationship, for sending at least transmissions
`modulated using at least two types of modulation methods,
`wherein the at least two types of modulation methods comprise
`
`3
`
`
`
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`
`IPR2014-00518
`Patent 8,023,580 B2
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`
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`a first modulation method and a second modulation method,
`wherein the second modulation method is of a different type
`than the first modulation method, wherein each transmission
`comprises a group of transmission sequences, wherein each
`group of transmission sequences is structured with at least a
`first portion and a payload portion wherein first information in
`the first portion indicates at least which of the first modulation
`method and the second modulation method is used for
`modulating second information in the payload portion, wherein
`at least one group of transmission sequences is addressed for an
`intended destination of the payload portion, and wherein for the
`at least one group of transmission sequences:
`
`the first information for said at least one group of
`transmission sequences comprises a first sequence, in the first
`portion and modulated according to the first modulation
`method, wherein the first sequence indicates an impending
`change from the first modulation method to the second
`modulation method, and
`
`the second information for said at least one group of
`transmission sequences comprises a second sequence that is
`modulated according
`to
`the second modulation method,
`wherein the second sequence is transmitted after the first
`sequence.
`
`
`
`D. Prior Art
`
`Boer
`
`US 5,706,428
`
`Jan. 6, 1998
`
`(Ex. 1204)
`
`
`
`
`E. Asserted Ground of Unpatentability
`
`The Board instituted inter partes review on the following asserted
`
`ground of unpatentability under 35 U.S.C. § 103(a) (Dec. on Inst. 17):
`
`claims 1, 4, 5, 10, 13, 20–22, 54, 57, 58, 61, 62, 66, 70, and 76–79 of the
`
`’580 patent on the ground of obviousness over Admitted Prior Art (“APA”)
`
`and Boer.
`
`
`
`4
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`IPR2014-00518
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`A. Claim Interpretation
`
`
`II. ANALYSIS
`
`
`
`In an inter partes review, the Board construes claim terms in an
`
`unexpired patent using their broadest reasonable construction in light of the
`
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b); In
`
`re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1275–79 (Fed. Cir. 2015).
`
`The claim language should be read in light of the specification as it would be
`
`interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech.
`
`Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The Office must apply the
`
`broadest reasonable meaning to the claim language, taking into account any
`
`definitions presented in the specification. Id. (citing In re Bass, 314 F.3d
`
`575, 577 (Fed. Cir. 2002)). The “ordinary and customary meaning” is that
`
`which the term would have to a person of ordinary skill in the art in
`
`question. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`
`1. Modulation Methods
`
`2007).
`
`
`
`Illustrative claim 1 recites a transceiver capable of transmitting using
`
`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 . . . .”
`
`Petitioner submits that the ordinary meaning of “modulation” is
`
`“‘[t]he process by which some characteristic of a carrier is varied in
`
`accordance with a modulating wave.’” Pet. 11 (quoting Ex. 1206, 3
`
`(technical dictionary)). Patent Owner submits that “modulation method” is
`
`5
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`IPR2014-00518
`Patent 8,023,580 B2
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`generally recognized in the pertinent art to mean “a technique for varying
`
`
`
`one or more characteristics of a carrier wave in a predetermined manner to
`
`convey information.” PO Resp. 9. Patent Owner submits further, and we
`
`agree, that there appears to be no significant difference between these two
`
`proffered constructions of “modulation.” Id. at 11.
`
`Later in its Patent Owner Response, however, Patent Owner advocates
`
`a narrower definition for “modulation method” for the purpose of addressing
`
`the prior art. In particular, Patent Owner submits that the only three
`
`characteristics of a carrier wave are frequency, phase, and amplitude and,
`
`thus, “modulation” is limited to varying one or more of the frequency, phase,
`
`and amplitude of the carrier wave. Id. at 12–13. Patent Owner relies on the
`
`Declaration of Dr. Christopher R. Jones (Ex. 2214 ¶ 40). Dr. Jones, in turn,
`
`relies on a definition in one of several technical dictionaries that have been
`
`provided by Patent Owner. Ex. 2214 ¶ 39. In the particular technical
`
`dictionary upon which Dr. Jones relies,2 two of the six definitions of
`
`“modulation” use the terms amplitude, frequency, and phase. Ex. 2215, 3.
`
`The entry contains broader definitions for “modulation,” as, for example, the
`
`first definition, which states that modulation is the process of varying some
`
`characteristic of a carrier wave, whereby the carrier wave can be a direct
`
`current, an alternating current, or “a series of regularly repeating, uniform
`
`pulses called a pulse chain.” Id.
`
`Patent Owner does not point to anything in the ’580 patent’s
`
`disclosure that would limit the definition of “modulation” to varying the
`
`amplitude, frequency, or phase of the carrier wave. Our reviewing court has
`
`“cautioned against relying on dictionary definitions at the expense of a fair
`
`
`2 Rudolf F. Graf, MODERN DICTIONARY OF ELECTRONICS, 6th ed. (1997).
`6
`
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`IPR2014-00518
`Patent 8,023,580 B2
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`reading of the claims, which must be understood in light of the
`
`
`
`specification.” Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1377
`
`(Fed. Cir. 2014). We, therefore, interpret “modulation” in accordance with
`
`its customary and ordinary meaning as the process by which some
`
`characteristic of a carrier is varied in accordance with a modulating wave.
`
`2. Types of Modulation Methods
`
`
`
`As we have noted, the claims recite “types” of modulation methods.
`
`Petitioner and Patent Owner disagree with respect to the meaning of a “type”
`
`of modulation method. Patent Owner submits that the broadest reasonable
`
`interpretation of “types” of modulation methods does not extend to
`
`modulation methods that are known merely to be incompatible with each
`
`other, but is limited to different “families” of modulation techniques, e.g.,
`
`the FSK (frequency shift keying) “family” of modulation methods and the
`
`QAM (quadrature amplitude modulation) “family” of modulation methods.
`
`PO Resp. 11–12. Petitioner, on the other hand, contends that “different PSK
`
`[phase shift keying] modulation methods” may be considered as different
`
`“types” of modulation, with the “different PSK modulation methods” within
`
`the same (PSK) “family” being incompatible with each other. Pet. 12.
`
`Patent Owner contends that a “special definition” was provided during
`
`prosecution of the ’580 patent, which defined the term different “types” of
`
`modulation to mean different “families” of modulation. PO Resp. 11–12.
`
`At the outset, we agree with Petitioner (Pet. Reply 10) to the extent that
`
`prosecution history is entitled to little weight under the broadest reasonable
`
`interpretation standard. See Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d
`
`973, 978 (Fed. Cir. 2014) (“This court also observes that the PTO is under
`
`7
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`IPR2014-00518
`Patent 8,023,580 B2
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`no obligation to accept a claim construction proffered as a prosecution
`
`
`
`history disclaimer, which generally only binds the patent owner.”). In any
`
`event, Patent Owner relies on the following statements during prosecution
`
`for the asserted “special definition”:
`
`Applicant thanks [the Examiner] for the indication that
`claims 1-18, and 37-57 are allowed (office action, p. 7).
`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, 20 (Reply Pursuant to 37 CFR § 1.111).
`
`As made plain in the above remarks, the claim amendments with
`
`respect to two “types” of modulation methods were not made in response to
`
`a rejection, as the relevant claims had been allowed. Cf. Tempo Lighting,
`
`742 F.3d at 978 (“[I]n this instance, the PTO itself requested Tivoli rewrite
`
`the ‘non-photoluminescent’ limitation in positive terms. Tivoli complied,
`
`and then supplied clarification about the meaning of the ‘inert to light.’”).
`
`Nor do the above remarks explain what a “family” might be, or why FSK is
`
`considered to be a member of one “family” and QAM a member of another
`
`“family.” “Although an inventor is indeed free to define the specific terms
`
`used to describe his or her invention, this must be done with reasonable
`
`clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480
`
`(Fed. Cir. 1994). Patent Owner’s purported “definition” is anything but
`
`clear or precise. Further, the only modulation methods named in the text of
`
`the ’580 patent are QAM, carrierless amplitude and phase (CAP)
`
`8
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`IPR2014-00518
`Patent 8,023,580 B2
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`modulation,3 and discrete multitone (DMT) modulation, each of which the
`
`
`
`patent calls “high performance modulation.” See, e.g., Ex. 1201, col. 2, ll.
`
`1–5.
`
`Patent Owner provides, as an exhibit, Provisional Application No.
`
`60/067,562 (Ex. 2201), which the ’580 patent purports to incorporate by
`
`reference (Ex. 1201, col. 1, ll. 8–15). That provisional distinguishes
`
`between “high performance modulation, such as QAM, CAP, or DMT,”
`
`which are optimized for high performance, and “low performance
`
`modulation, such as FSK, PAM or DSB,” which may be implemented in
`
`much less expensive devices. Ex. 2201, 3. An objective reading of the
`
`above-noted remarks during prosecution suggests that, contrary to Patent
`
`Owner’s arguments, the “different families of modulation techniques” refer
`
`to high performance modulation (such as QAM) and low performance
`
`modulation (such as FSK). The prosecution history is, at best, ambiguous.
`
`“It is inappropriate to limit a broad definition of a claim term based on
`
`prosecution history that is itself ambiguous.” Inverness Med. Switz. GmbH
`
`v. Warner Lambert Co., 309 F.3d 1373, 1382 (Fed. Cir. 2002).
`
`Moreover, Patent Owner’s proffered construction (e.g., PO Resp. 13)
`
`of “types” of modulation methods being based on “one or more” of the
`
`carrier wave’s frequency, phase, and amplitude “families” is, itself,
`
`ambiguous. We reproduce the following exchange during oral argument:
`
`JUDGE LEE: How do you summarize your position?
`What is the definition of different family?
`
`
`
`3 According to Patent Owner, the patent contains a typographical error in
`that “[c]arrier” should be “[c]arrierless.” PO Resp. 10 n.3.
`
`9
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`IPR2014-00518
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`MR. MOLLAAGHABABA: Okay. I believe these three
`characteristics, phase, amplitude and frequency of the carrier
`wave, define these three families.
`Now, if two methods are using the same characteristic to
`modulate the wave, then they are not different types. I mean,
`DBPSK and DQPSK, they both use the phase, that
`characteristic of the carrier wave to modulate and convey
`information.
`
`JUDGE LEE: Okay. So phase is one family, amplitude is
`one, and frequency is another. So those are broad categories.
`
`MR. MOLLAAGHABABA: Yes.
`
`JUDGE LEE: So you can only have three types then.
`
`MR. MOLLAAGHABABA: But you can have situations
`where the modulation can belong to two categories.
`I mean, there are some intersections. QAM modulates
`both amplitude and phase.
`
`JUDGE LEE: So to which family would they belong?
`
`MR. MOLLAAGHABABA: Well, they are part of both
`families. I mean, they belong to two -- both families. There is
`some intersections where some modulation techniques use more
`than one characteristic. They use two characteristics.
`
`JUDGE LEE: Then are they of different types? If there
`is just only partial overlap, are they still different types, or is it
`the same type because they also share something in common?
`
`MR. MOLLAAGHABABA: Yes, our contention is that
`they are not of different types. They are different in the sense
`that they are different methods, like QAM and PSK, but they
`share a family so, therefore, they are not different types. They
`share the family for both.
`
`
`10
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`Tr. 88:8–89:17. Thus, according to counsel for Patent Owner, two
`
`
`
`modulation methods that are different in one characteristic but the same in
`
`another, e.g., one varying phase and amplitude and the other varying
`
`frequency and amplitude, would be regarded as belonging in the same
`
`family. Such an understanding of the classification or categorization of
`
`“family” in case of partial overlap was not a part of any representation
`
`during prosecution history, but presented for the first time by counsel for
`
`Patent Owner during oral argument. It reflects ambiguity in the construction
`
`proposed by Patent Owner.
`
`The ’580 patent describes Type A and Type B modulation methods
`
`(and tributary modems, or “tribs”), but does not associate directly any
`
`particular modulation method with a Type A or a Type B method (or “trib”).
`
`See, e.g., Ex. 1201, col. 5, l. 23 – col. 7, l. 3. The provisional application,
`
`however, associates lower-cost FSK modems with Type B “tribs.” Ex.
`
`2201, 5; see also ’580 patent —
`
`While it is possible to use high performance tribs running state
`of the art modulation methods such as QAM, CAP, or DMT to
`implement both the high and low data rate applications,
`significant cost savings can be achieved if lower cost tribs using
`low performance modulation methods are used to implement
`the lower data rate applications.
`
`
`Ex. 1201, col. 5, ll. 17–22.
`
`Further, the ’580 patent does not draw distinctions between “families”
`
`of modulation techniques directed to differences in modulation with respect
`
`to amplitude, phase, or frequency. Rather, the ’580 patent draws distinctions
`
`between relatively expensive high performance techniques and relatively
`
`inexpensive low performance techniques. The ’580 patent attempts to
`
`11
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`remedy the asserted deficiency in the prior art that all modems in a system
`
`
`
`must use a single modulation method, and thus must all be high-performance
`
`modems, with the high-performance, relatively expensive modems merely
`
`lowering the data rate for lower data-rate applications. As the ’580 patent
`
`explains:
`
`All users in the system will generally have to be equipped with
`a high performance modem to ensure modulation compatibility.
`These state of the art modems are then run at their lowest data
`rates for those applications that require relatively low data
`throughput performance. The replacement of inexpensive
`modems with much more expensive state of the art devices due
`to modulation compatibility imposes a substantial cost that is
`unnecessary in terms of the service and performance to be
`delivered to the end user.
`
`Ex. 1201, col. 2, ll. 8–15.
`
`Further, the ’580 patent refers to an objective of using multiple
`
`modulation methods to facilitate communication among a plurality of
`
`modems in a network, which have heretofore been “incompatible.” Id. at
`
`col. 2, ll. 16–20.
`
`In view of the foregoing, we do not interpret a “type” of modulation
`
`method as referring to some vague or undefined “family” of modulation
`
`methods. We interpret different “types” of modulation methods as
`
`modulation methods that are incompatible with one another. Thus, contrary
`
`to Patent Owner’s construction, two modulation methods that are based on
`
`varying the same one of the frequency, amplitude, or phase of the carrier
`
`wave may be different “types” of modulation methods.
`
`
`
`12
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`B. Prior Art
`
`
`
`
`
`
`
`1. Admitted Prior Art
`
`Petitioner contends that the ’580 patent’s disclosed multipoint
`
`communication systems (or master/slave systems), depicted in Figures 1 and
`
`2 and described in column 3, line 40 through column 4, line 50, contains
`
`material that may be used as prior art against the patent under 35 U.S.C.
`
`§ 103(a). We agree. Figure 1 of the patent is labeled as “Prior Art.” Pet. 6;
`
`Ex. 1201, Fig. 1. Further, the ’580 patent’s specification refers to “prior art”
`
`multipoint communication system 22 comprising master modem or
`
`transceiver 24, which communicates with a plurality of tributary modems
`
`(“tribs”) or transceivers 26. Pet. 6; Ex. 1201, col. 3, ll. 40–44. Further, the
`
`’580 patent describes Figure 2 as illustrating the operation of the multipoint
`
`communication system of (prior art) Figure 1. Pet. 7; Ex. 1201, col. 3, ll. 9–
`
`2. Boer
`
`
`
`10.
`
`Boer describes a wireless LAN that includes first stations that operate
`
`at 1 or 2 Mbps (Megabits per second) data rate and second stations that
`
`operate at 1, 2, 5, or 8 Mbps data rate. Ex. 1204, Abstract.
`
`13
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`Figure 1 of Boer is reproduced below.
`
`
`
`
`
`Figure 1 is said to be a block diagram of a wireless LAN embodying
`
`Boer’s invention. Ex. 1204, col. 1, ll. 53–54. LAN 10 includes access point
`
`12, serving as a base station. The network includes mobile stations 18-1 and
`
`18-2 that are capable of transmitting and receiving messages at a data rate of
`
`1 or 2 Mbps using DSSS (direct sequence spread spectrum) coding. When
`
`operating at 1 Mbps, a station uses DBPSK (differential binary phase shift
`
`keying) modulation. When operating at 2 Mbps, a station uses DQPSK
`
`(differential quadrature phase shift keying) modulation. Id. at col. 2, ll. 6–
`
`14
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`27. Mobile stations 22-1 and 22-2 are capable of operating at the 1 and 2
`
`
`
`Mbps data rates using the same modulation and coding as stations 181 and
`
`182. In addition, stations 22-1 and 22-2 can operate at 5 and 8 Mbps data
`
`rates using PPM/DQPSK (pulse position modulation–differential quadrature
`
`phase shift keying) in combination with the DSSS coding. Id. at col. 2, ll.
`
`34–44.
`
`
`
`C. Claims 1, 4, 5, 10, 13, 20–22, 54, 57, 58, 61, 62, 66, 70,
` and 76–79 – APA and Boer
`
`1. Asserted Ground
`
`
`
`Petitioner applies the teachings of the APA and Boer to demonstrate
`
`obviousness of the subject matter of illustrative claim 1, relying on APA for
`
`teaching of master/slave communication systems. Pet. 19–24, 28–33 (claim
`
`chart). Petitioner submits that a person having ordinary skill in the art would
`
`have been motivated to combine Boer with APA, referring to the
`
`Declaration of Dr. David Goodman (Ex. 1220 ¶¶ 102–104). Id. at 18.
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`Dr. Goodman testifies that polled multiport master/slave
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`communications systems were well known to those of ordinary skill in the
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`art for simplicity and determinacy, referring to Exhibit 1218. Ex. 1220
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`¶ 103. Petitioner submits Exhibit 1218 (“Upender”) as a November 1994
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`publication that compares various strengths and weaknesses for
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`communication protocols for embedded systems. Ex. 1218, 7. The
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`document states that polling is one of the more popular protocols for
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`embedded systems “because of its simplicity and determinacy.” Id. In that
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`protocol, a centrally assigned master periodically sends a polling message to
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`the slave nodes, giving them explicit permission to transmit on the network.
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`Id. The protocol “is ideal for a centralized data-acquisition system where
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`peer-to-peer communication and global prioritization are not required.” Id.
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`2. Motivation to Combine
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`Patent Owner in its Response argues that Upender does not reflect a
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`proper motivation from the prior art for the proffered combination of Boer
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`and APA. Patent Owner submits a Declaration from a co-author of Upender
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`to show that the article did not suggest the use of a master/slave
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`communication system. Ex. 2208 (Declaration of Dr. Philip Koopman).
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`We have considered Patent Owner’s arguments and evidence but find
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`that the clear teachings in Upender are not diminished or rebutted. Upender
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`investigates tradeoffs in different communication protocols. The article
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`concludes that CSMA/CA (carrier sense multiple access with collision
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`avoidance), or RCSMA (reservation CSMA), is a good choice for some
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`embedded systems. Ex. 1218, 10–11. The article also indicates that polling
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`may not provide sufficient flexibility for “advanced systems,” classifying
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`polling as “simple,” but noting that the discussion of the different protocol
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`strengths and weaknesses “should allow you to select the best protocol to
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`match your needs.” Id. In fact, Dr. Koopman admits that there are some
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`systems for which master/slave is a better match for the design requirements.
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`Pet. Reply 8; Ex. 1238, 39:2–20.
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`That Upender may identify some advantages of CSMA/CA over a
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`master/slave protocol is not a “teaching away” from the master/slave
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`protocol. Upender teaches that master/slave protocols were widely used and
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`a good choice for simple systems. See In re Gurley, 27 F.3d 551, 553 (Fed.
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`Cir. 1994) (“[A] person seeking to improve the art of flexible circuit boards,
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`on learning from [a reference] that epoxy was inferior to polyester-imide
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`resins, might well be led to search beyond epoxy for improved products.
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`However, [the reference] also teaches that epoxy is usable and has been used
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`for Gurley’s purpose.”).
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`Patent Owner’s position appears to be that the prior art teaches that
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`one and only one communication protocol should ever be used, which is
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`directly contrary to the clear teachings of Upender. In view of Upender, one
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`of ordinary skill in the art would have found it obvious to use a different
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`prior art communication protocol (e.g., a simpler protocol) when using
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`multiple data rates as described by Boer.
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`Further, we agree with Petitioner that Boer does not describe CSMA
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`as central to an alleged goal of seeking a “reduction of overhead-in-time per
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`transmission,” but relates that reduction to the use of short acknowledgment
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`(ACK) messages. PO Resp. 40–41; Pet. Reply 8; Ex. 1204, col. 8, ll. 16–29.
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`Patent Owner submits that Dr. Goodman’s Declaration (Ex. 1220) is
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`unreliable because it is unclear what level of skill it attributes to the ordinary
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`artisan. PO Resp. 32. The alleged lack of clarity, however, does not affect
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`the outcome. We note that specifying the level of ordinary skill in terms of
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`an academic degree in a field of study and the number of years of practical
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`working experience is generally unhelpful, as a practical matter, because it
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`does not convey whether one with ordinary skill in the art would have been
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`aware of anything specific or particular. Patent Owner has not directed us to
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`evidence establishing what someone who has earned a certain degree or who
`
`has a certain number of years of experience necessarily knows. It is not
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`always necessary, however, to have an express proposition on the level of
`
`ordinary skill in the art. The level of ordinary skill in the art may be
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`reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d
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`
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`1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir.
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`1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
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`We agree with Patent Owner to the extent that one of skill in the art
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`would not consider using a CSMA/CA protocol in a master/slave
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`configuration. PO Resp. 43–44. That combination, however, is not
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`contemplated by the asserted ground of unpatentability. As Patent Owner
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`and Dr. Koopman recognize, the transmitted data used in Boer to effect the
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`CSMCA/CA protocol would be “totally unnecessary” in a master/slave
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`configuration. Id. at 44; Ex. 2208 ¶ 96.
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`3. Different Types of Modulation Methods
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`
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`Illustrative claim 1 recites two types of modulation methods, in
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`particular “wherein the at least two types of modulation methods comprise a
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`first modulation method and a second modulation method,” and the second
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`modulation method is of “a different type” than the first modulation method.
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`Petitioner contends that Boer’s DBPSK modulation corresponds to the
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`claimed “first” modulation method. Pet. 30 (claim chart). Petitioner
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`submits that either of Boer’s DQPSK modulation and PPM/DQPSK
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`modulation corresponds to the claimed “second” modulation method,
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`because each of DQPSK modulation and PPM/DQPSK modulation is of a
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`different type — i.e., not compatible with — DBPSK modulation. Pet. 20–
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`21, 30; Ex. 1220 ¶¶ 105–111. On the record before us, we agree that
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`DQPSK and PPM/DQPSK modulation methods are incompatible with
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`DBPSK modulation. See, e.g., Ex. 1220 ¶¶ 122–124.
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`Patent Owner responds, however, that neither of DQPSK and
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`
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`PPM/DQPSK can be considered a modulation method of a type different
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`from DBPSK. PO Resp. 47–53. Patent Owner argues that DBPSK and
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`DQPSK are not different “types” of modulation methods because the
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`methods are within the same “family,” because both vary the same
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`fundamental characteristic of a carrier wave — its phase. Id. at 47–48. We
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`do not find Patent Owner’s argument to be persuasive because we are not
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`convinced that the broadest reasonable interpretation of “types” of
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`modulation is so limited. See Claim Interpretation, § II.A.2, supra.
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`Patent Owner alleges also that Boer does not describe DBPSK and
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`DQPSK as “incompatible” modulation methods because mobile stations are
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`disclosed as capable of transmitting and receiving using DBPSK and also
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`using DQPSK. PO Resp. 46–47. However, whether one “type” of
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`modulation is incompatible with another “type” concerns the method of
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`modulation, not necessarily the modem for carrying out that method. That
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`is, a modem might be designed (as in Boer) to transmit and receive using,
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`separately, two incompatible modulation methods, but that does not mean
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`the two modulation methods are compatible with each other.
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`Moreover, Boer describes PPM/DQPSK modulation, which falls
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`within the meaning of a “different type” of modulation method, with respect
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`to DBPSK, under our construction of the term. Cf. Ex. 1220 ¶ 123 (“It is my
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`opinion that PPM/DQPSK is a different ‘type’ of modulation than DBPSK
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`under any possible claim construction.”). According to Dr. Goodman, phase
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`is not used in PPM, unlike in DBPSK and DQPSK modulation. Id. ¶ 124.
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`In PPM, the start and stop time of a transmission is varied in response to the
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`information to be transmitted, with the time shift being indicative of data
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`bits. Id.
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`Patent Owner argues that PPM as used in Boer is not a modulation
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`method. PO Resp. 48–52. Patent Owner’s position, however, is based on
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`the argument that a “modulation method” is limited to varying one or more
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`of the “fundamental characteristics” of amplitude, frequency, and phase. We
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`do not find the argument persuasive, in view of the requirement of
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`construing the term in accordance with its broadest reasonable interpretation.
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`See § II.A.1, supra. We acknowledge that Boer refers to PPM as “PPM type
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`coding.” PO Resp. 52; Ex. 1204, col. 4, ll. 45–48. However, as pointed out
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`by Petitioner, Boer appears to use the terms “coding” and “modulation”
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`interchangeably. Pet. Reply 15.
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`Moreover, Dr. Jones’ Declaration is unclear in what is meant by PPM
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`being not a carrier wave modulation technique “as utilized in Boer” or
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`“within the context of Boer.” Ex. 2214 ¶ 58. Dr. Jones submits that he
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`holds numerous patents in types of modulation that include pulse-amplitude
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`modulation (PAM). Id. ¶ 7. Patent Owner provides, as an exhibit, a
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`technical treatise on communication systems engineering4 that addresses
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`PAM and PPM as two types of “Pulse Modulation Signals.” Ex. 2202, 438–
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`444 (original page numbering). In PAM, “the information is conveyed by
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`the amplitude of the pulse.” Id. at 438. In PPM (consistent with Dr.
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`Goodman’s t
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