UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`SAMSUNG ELECTRONICS CO. LTD.; SAMSUNG ELECTRONICS
`AMERICA, INC.; SAMSUNG TELECOMMUNICATIONS AMERICA, LLC;
`AND SAMSUNG AUSTIN SEMICONDUCTOR, LLC;
`Petitioner
`
`v.
`
`REMBRANDT WIRELESS TECHNOLOGIES, LP
`Patent Owner
`___________
`
`Case IPR2014-00519
`Patent 8,023,580
`___________
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,023,580
`
`
`
`
`
`
`
`
`
`
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
`
`
`TABLE OF CONTENTS
`
`I.
`
`COMPLIANCE WITH REQUIREMENTS FOR A PETITION FOR
`
`INTER PARTES REVIEW .......................................................................... 1
`A.
`Certification The `580 Patent May Be Contested By Petitioner ........... 1
`B.
`Fee For Inter Partes Review (37 C.F.R. §§ 42.15(a) and 42.103) ........ 1
`C. Mandatory Notices (37 C.F.R. §42.8) ................................................... 1
`1.
`Real Parties-In-Interest (§ 42.8(b)(1)) ........................................ 1
`2.
`Related Matters (§ 42.8(b)(2)) .................................................... 2
`3.
`Lead And Backup Counsel (§ 42.8(b)(3)) .................................. 2
`4.
`Service Information (§ 42.8(b)(4)) ............................................. 2
`D.
`Proof Of Service (§42.6(e) and § 42.105(a)) ........................................ 2
`II.
`42.104(B)) ........................................................................................................ 2
`III. RELEVANT INFORMATION CONCERNING THE `580 PATENT .... 3
`A.
`Subject Matter Of The `580 Patent ....................................................... 3
`1.
`Technology Described In The `580 Patent ................................. 3
`2.
`Admissions Made In `580 Patent Regarding Prior Art ............... 5
`B.
`Effective Filing Date And Prosecution History Of The `580 Patent .... 8
`Person Of Ordinary Skill In The Art ..................................................... 9
`C.
`D. How The Challenged Claims Are To Be Construed ............................. 9
`1.
`“Second Modulation Method” (Claims 23, 32, 40, 49) ............ 10
`IV. PRECISE REASONS FOR RELIEF REQUESTED ............................... 11
`A.
`41 And 43-44 ....................................................................................... 11
`
`IDENTIFICATION OF CLAIMS BEING CHALLENGED (§
`
`“First Modulation Method” (Claims 23, 32, 40, 41, 49) And
`
`Boer Anticipates Or Renders Obvious Claims 23, 25, 30, 32, 34, 40-
`
`i
`
`
`
`
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
`
`
`Overview Of Boer ..................................................................... 11
`1.
`Boer Anticipates Or Renders Obvious Claims 23, 25 And 30 . 12
`2.
`Boer Anticipates Or Renders Obvious Claims 32 and 34 ........ 25
`3.
`Boer Anticipates Claims 40-41 And 43-44............................... 27
`4.
`By Admitted Prior Art (“APA”) In View Of Boer ............................. 37
`1.
`Systems Were Well-Known ...................................................... 37
`2. Motivation To Combine ............................................................ 38
`3.
` ................................................................................................... 41
`CONCLUSION ............................................................................................ 44
`
`Claims 29, 38 And 47 Are Rendered Obvious Under 35 U.S.C. § 103
`
`The APA Demonstrates That Multipoint Communication
`
`APA In View Of Boer Renders Claims 29, 38 and 47 Obvious
`
`B.
`
`V.
`
`
`
`
`
`ii
`
`
`
`
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
`
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Constant v. Advanced Micro–Devices, Inc., 848 F.2d 1560 (Fed.Cir.1988) ............. 8
`
`In re Youman, 679 F.3d 1335 (Fed. Cir. 2012) ........................................................ 10
`
`In re Zletz, 13 USPQ2d 1320 (Fed. Cir. 1989) ........................................................ 10
`
`Pharmastem Therapeutics, Inc. v. Viacell, Inc., 491 F.3d 1342 (Fed. Cir. 2007) .... 7,
`37
`
`Statutes
`
`35 U.S.C. § 102(e) .............................................................................................. 3, 11
`
`35 U.S.C. § 103 ........................................................................................... ii, 3, 8, 37
`
`35 U.S.C. § 315(b) ..................................................................................................... 1
`
`77 Fed. Reg. 48764 .................................................................................................... 9
`
`Other Authorities
`Rules
`
`37 C.F.R. § 42.103 ..................................................................................................... 1
`
`37 C.F.R. § 42.104(b) ................................................................................................ 3
`
`37 C.F.R. § 42.15(a) ................................................................................................... 1
`
`37 C.F.R. § 42.6(e) ..................................................................................................... 3
`
`37 C.F.R. § 42.8(b)(1) ................................................................................................ 2
`
`37 C.F.R. § 42.8(b)(2) ................................................................................................ 2
`
`37 C.F.R. § 42.8(b)(3) ................................................................................................ 2
`
`37 C.F.R. § 42.8(b)(4) ................................................................................................ 2
`
`37 C.F.R. §42.105(a) .................................................................................................. 3
`
`iii
`
`
`
`
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
`
`37 C.F.R. §42.8 .......................................................................................................... 2
`
`37 CFR § 42.100(b) ................................................................................................. 10
`
`
`
`iv
`
`
`
`
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
`
`Attachment A: Proof of Service of the Petition
`
`Attachment B: List of Evidence and Exhibits Relied Upon in Petition
`
`
`
`v
`
`
`
`
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
`
`
`I.
`
`COMPLIANCE WITH REQUIREMENTS FOR A PETITION FOR
`INTER PARTES REVIEW
`A.
`Certification The `580 Patent May Be Contested By Petitioner
`Petitioner certifies that U.S. Patent No. 8,023,580 (“the `580 patent”) (Ex.
`
`1301) is available for inter partes review. Petitioner certifies that it is not barred or
`
`estopped from requesting inter partes review of the claims of the `580 patent on
`
`the grounds identified in this Petition. Neither Petitioner nor any party in privity
`
`with Petitioner has filed a civil action challenging the validity of any claim of the
`
``580 patent. The `580 patent has not been the subject of a prior inter partes review
`
`by Petitioner or a privy of Petitioner.
`
`Petitioner also certifies this petition for inter partes review is filed within
`
`one year of the date of service of a complaint alleging infringement of a patent.
`
`Such a complaint was filed against all petitioners on March 15, 2013, Civil Action
`
`No. 2:13-cv-00213 (E.D. Tex. 2013), in the Eastern District of Texas. Ex. 1302.
`
`The first petitioner to be served was served with the complaint on March 20, 2013,
`
`Ex. 1303. This petition thus complies with 35 U.S.C. § 315(b).
`B.
`Fee For Inter Partes Review (37 C.F.R. §§ 42.15(a) and 42.103)
`The Director is authorized to charge the fee specified by 37 CFR § 42.15(a)
`
`to Deposit Account No. 04-1073. Should any further fees be required by the
`
`present Petition, the Patent Trial and Appeal Board (“PTAB”) is hereby authorized
`
`to charge the above referenced Deposit Account.
`C. Mandatory Notices (37 C.F.R. §42.8)
`1. Real Parties-In-Interest (§ 42.8(b)(1))
`The real parties-in-interest are Samsung Electronics Co. Ltd.; Samsung
`
`
`
`
`
`1
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
`
`
`Electronics America, Inc.; Samsung Telecommunications America, LLC; and
`
`Samsung Austin Semiconductor, LLC. (Collectively, “Petitioner”).
`
`2. Related Matters (§ 42.8(b)(2))
`The `580 patent is a subject of an action styled as Rembrandt Wireless Tech.,
`
`LP v. Samsung Elect. Co. LTD., No. 2:13-cv-00213 (E.D. Tex. 2013) (“the
`
`Litigation”), served on Petitioner March 20, 2013, Ex. 1303. Petitioner has also
`
`filed Petitions IPR-2014-5014, 5015 & 5018 for the `580 patent.
`
`3. Lead And Backup Counsel (§ 42.8(b)(3))
`
`
`Lead Counsel
`Jeffrey A. Miller, Reg. No. 35, 287
`millerj@dicksteinshapiro.com
`(650) 690-9554
`
`Backup Counsel
`Daniel G. Cardy, Reg. No. 66,537
`cardyd@dicksteinshapiro.com
`(202) 420-3033
`
`4. Service Information (§ 42.8(b)(4))
`Service on Petitioner may be made by mail or hand delivery to Jeffrey A.
`
`Miller, Dickstein Shapiro LLP, 1841 Page Mill Road, Palo Alto, CA 94304, Tel:
`
`(650) 690-9500, Fax: (650) 690-9501. Please also direct all correspondence to
`
`lead counsel at millerj@dicksteinshapiro.com, with a courtesy copy sent to
`
`Samsung.Rembrandt@dicksteinshapiro.com.
`D.
`Proof Of Service (§42.6(e) and § 42.105(a))
`Proof of service of this petition is provided in Attachment A.
`
`II.
`
`IDENTIFICATION OF CLAIMS BEING CHALLENGED (§
`42.104(B))
`Petitioner requests inter partes review of claims 23, 25, 29-30, 32, 34, 38,
`
`40-41, 43-44 and 47:
`
`
`
`
`
`2
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
`
`
`(1) Claims 23, 25, 30, 32, 34, 40-41, and 43-44, are anticipated under 35 U.S.C.
`
`§ 102(e) or rendered obvious under 35 U.S.C. § 103 by U.S. Patent No.
`
`5,706,428 (“Boer”) (Ex. 1304).
`
`(2) Claims 29, 38 and 47 are rendered obvious under 35 U.S.C. § 103 by
`
`Admitted Prior Art (“APA”) in view of Boer (Ex. 1304).
`
`Petitioner’s proposed construction of the claims, the evidence relied upon,
`
`and the precise reasons why the claims are unpatentable are provided in § IV. The
`
`evidence relied upon in support of this petition is listed in Attachment B.
`III. RELEVANT INFORMATION CONCERNING THE `580 PATENT
`A.
`Subject Matter Of The `580 Patent
`1. Technology Described In The `580 Patent
`The `580 patent is directed to the “fields of data communications and
`
`modulator/demodulators (modems), and, more particularly, to a data
`
`communications system in which a plurality of modulation methods are used to
`
`facilitate communication among a plurality of modem types.” Ex. 1301, `580
`
`patent, 1:19-23. The `580 patent identifies a problem with communications
`
`systems where “communication between modems is generally unsuccessful unless
`
`a common modulation method is used.” Id. at 1:45-47. The `580 patent describes
`
`a “multipoint network architecture,” which the `580 patent asserts utilizes a
`
`“master” modem and at least two “tributary” (or “trib”) modems. The `580 patent
`
`notes that where “…one or more of the trib modems are not compatible with the
`
`modulation method used by the master, those tribs will be unable to receive
`
`communications from the master.” Id. at 1:54-61. Ex. 1318, ¶50 (Goodman
`
`
`
`
`
`3
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
`
`
`Declaration).
`
`Because of these issues, the `580 patent asserts that “…communication
`
`systems comprised of both high performance and low or moderate performance
`
`applications can be very cost inefficient to construct.” Id. at 1:66-2:1. The `580
`
`patent asserts that the solution used at the time to overcome incompatible
`
`modulation schemes was the use of high performance modems for all users,
`
`regardless of need, which resulted in higher costs. Id. at 2:8-16. Thus, the `580
`
`patent asserts that “…what is sought, and what is not believed to be provided by
`
`the prior art, is a system and method of communication in which multiple
`
`modulation methods are used to facilitate communication among a plurality of
`
`modems in a network, which have heretofore been incompatible.” Id. at 2:17-20.
`
`Ex. 1318, ¶51.
`
`The purported invention of the `580 patent is a system like that shown in
`
`Figure 3, in which a master transceiver 64 is capable of transmitting and receiving
`
`data having what the patent identifies as “type A” modulation and “type B”
`
`modulation. Id. at 5:23-33. Master transceiver 64 can communicate with tribs, e.g.,
`
`trib 66, each of which communicates with either type A or type B modulation
`
`(shown as “type X” in Figure 3), but not both. Id. at 5:34-46. Figure 4 shows an
`
`exemplary network in which master transceiver 64 can communicate with either
`
`type A or type B modulation. Trib 66a communicates with type A modulation,
`
`while trib 66b communicates with type B modulation. Ex. 1318, ¶52.
`
`In the example given in the specification, type A modulation is the primary
`
`modulation method, which, as seen in Figure 5, means that the master transceiver
`
`
`
`
`
`4
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
`
`
`64 initially transmits a sequence 104 using type A modulation. Ex. 1301, 5:57-67.
`
`If master transceiver 64 wishes to communicate with trib 66b, it can only do so
`
`with type B modulation. To switch from type A modulation to type B modulation,
`
`master transceiver 64 transmits a training sequence 106 to type A trib 66a to notify
`
`it of an impending modulation scheme change. Id. at 6:3-6. Then, master
`
`transceiver 64 sends a new transmission in sequence 108, this time using type B
`
`modulation, containing a trib address as well as data intended for that addressed
`
`trib. Id. at 6:8-15. Thereafter, master transceiver 64 transmits a trailing sequence
`
`using type A modulation, which informs the trib 66a that the type B modulation
`
`transmission is complete. The type B trib 66b simply goes back to ignoring type A
`
`transmissions after not receiving a poll request in the particular time interval
`
`defined for type B transmissions, or after transmission of the particular quantity of
`
`data. Id. at 6:19-25. Ex. 1318, ¶53.
`
`Similar to the above, master transceiver 64 can communicate with a type A
`
`trib, e.g., trib 66a, by transmitting a training sequence with type A modulation that
`
`contains an address for a particular trib. The training sequence is followed by data,
`
`which is then received by the addressed trib. Master transceiver 64 then transmits
`
`a trailing sequence using type A modulation, which indicates the end of a
`
`communication session. Ex. 1301, 6:49-58. Ex. 1318, ¶54.
`
`2. Admissions Made In `580 Patent Regarding Prior Art
`As discussed above, the `580 patent describes a multipoint network
`
`architecture using a master modem and at least two tribs, with the specification
`
`making clear that “tribs” are the same thing as “slaves.” For example, in the
`
`
`
`
`
`5
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
`
`
`“Description of the Illustrative Embodiments,” the `580 patent discusses an
`
`“exemplary” multipoint communication protocol, asserting that in such a protocol
`
`the “master … permits transmission from a trib only when that trib has been
`
`selected.” Ex. 1301, 4:4:9. In its “Summary,” the `580 patent describes a
`
`“master/slave” relationship as being one where “communication from a slave to a
`
`master occurs in response to a communication from the master to the slave.” Id. at
`
`2:24-29. Thus, the `580 patent teaches that “tribs” and “slaves” are both controlled
`
`by a master, which demonstrates that in the `580 patent, tribs and slaves are the
`
`same thing, and the terms are used interchangeably. Ex. 1318, ¶55.
`
`Both the figures and the specification of the `580 patent admit that
`
`communications systems using master/slave relationships are prior art. In
`
`particular, Figure 1, which shows a master transceiver 24 in communication with
`
`three tributary transceivers, i.e., slaves, is labeled as “Prior Art.” In addition, the
`
`specification of `580 patent admits that multipoint communication systems
`
`utilizing a master and multiple slaves is prior art. Ex. 1301, 3:40-44 (“With
`
`reference to FIG. 1, a prior art multipoint communication system 22 is shown to
`
`comprise a master modem or transceiver 24, which communicates with a plurality
`
`of tributary modems (tribs) or transceivers 26-26 over communication medium
`
`28.”) (emphasis added). Ex. 1318, ¶56.
`
`Patentee made further admissions during prosecution of one of the parent
`
`applications to the `580 patent. As will be discussed in more detail below, one of
`
`the parent applications to the `580 patent is Serial No. 09/205,205, which issued as
`
`U.S. Patent No. 6,614,838 (Ex. 1314). During prosecution of the `838 patent, an
`
`
`
`
`
`6
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
`
`
`Office Action was mailed one June 28, 2001 where Patentee was required to
`
`designate Figure 2 as prior art. Ex. 1315, p. 2 (6/28/2001 Office Action) (“Figure
`
`2 should be designated by a legend such as - prior art - because only that
`
`which is old is illustrated.”) (emphasis added). In a “First Amendment And
`
`Response” filed October 1, 2001, Patentee made the amendment, thus admitting
`
`that the subject matter shown in Figure 2 is prior art. Ex. 1316. The specification
`
`of the `580 patent describes the prior art shown in Figure 2 as follows:
`
`Referring now to FIG. 2, an exemplary multipoint communication
`session is illustrated through use of a ladder diagram. This system
`uses polled multipoint communication protocol. That is, a master
`controls the initiation of its own transmission to the tribs and permits
`transmission from a trib only when that trib has been selected.
`
`Ex. 1301, 4:4-9 (emphasis added). Lest there be any doubt that the `580 patent and
`
`its prosecution history admit that polled multiport communications using masters
`
`and slaves are prior art, the specification of the `580 patent says that the operation
`
`of the prior art system of Figure 1 is illustrated in Figure 2. Id. At 3:9-10 (“FIG. 2
`
`is a ladder diagram illustrating the operation of the multipoint communication
`
`system of FIG. 1.”). Ex. 1318, ¶57.
`
`Patentee’s admissions in the `580 patent and the prosecution history of the
`
``205 application regarding the fact that master/slave communication systems are
`
`prior art are binding, and can be used when determining whether a claim is obvious.
`
`Pharmastem Therapeutics, Inc. v. Viacell, Inc., 491 F.3d 1342, 1362 (Fed. Cir.
`
`2007) (“Admissions in the specification regarding the prior art are binding on the
`
`
`
`
`
`7
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
`
`
`patentee for purposes of a later inquiry into obviousness.”); Constant v. Advanced
`
`Micro–Devices, Inc., 848 F.2d 1560, 1570 (Fed.Cir.1988) (‘‘A statement in the
`
`patent that something is in the prior art is binding on the applicant and patentee for
`
`determinations of anticipation and obviousness.’’).
`B.
`Effective Filing Date And Prosecution History Of The `580 Patent
`The `580 patent issued from U.S. Application No. 12/543,910. The `910
`
`application was a continuation of U.S. Application No. 11/774,803, which issued
`
`as U.S. Patent No. 7,675,965. The `803 application was a continuation of U.S.
`
`Application No. 10/412,878, which issued as U.S. Patent No. 7,248,626. The `878
`
`application was a continuation-in-part of U.S. Application No. 09/205,205, which
`
`became U.S. Patent 6,614,838. The `580, `965, `626, and `838 patents claim the
`
`benefit of the filing date of U.S. Provisional App. No. 60/067,562, filed Dec. 5,
`
`1997. The effective filing date of the challenged claims is December 5, 1997.
`
`The `580 patent was filed on August 19, 2008 with 100 claims. Ex. 1307.
`
`On September 1, 2010, an Office Action was mailed in which a number of claims
`
`were objected to due to an antecedent basis issue but were otherwise deemed
`
`allowable, while other claims were rejected under 35 U.S.C. §§ 102(b) & 103(a).
`
`Ex. 1308. Application claim 1, which would issue as claim 1, was one such claim
`
`that was deemed allowable but for the antecedent basis issue. Id. at p. 2. On
`
`March 1, 2011, Patent Owner filed a response to the Office Action (“3/1/2011
`
`Reply”). Ex. 1309. In that response, Patent Owner amended many pending
`
`claims, including application claim 1 (issued claim 1), cancelled other claims and
`
`added forty-eight claims. Included within the added claims was independent claim
`
`
`
`
`
`8
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
`
`
`123, which would issue as claim 58. Id. at p. 15. On March 10, 2011, Patent
`
`Owner refiled the claims in response to a Notice Of Non-Compliant Amendment.
`
`Ex. 1310.
`
`On May 11, 2011, Patent Owner filed a paper making further amendments to
`
`pending claims 1 and 95. Ex. 1311. The application was allowed on July 22,
`
`2011, although no Statement of Reasons for Allowance was provided. Ex. 1312.
`
`On July 26, 2011, Patent Owner filed an Amendment After Allowance further
`
`amending claims that, after entry, issued as claims 40, 49, and 54. Ex. 1313.
`C.
`Person Of Ordinary Skill In The Art
`A person of ordinary skill in the art in the field of the `580 patent would
`
`have had a Master’s Degree in Electrical Engineering that included coursework in
`
`communications systems and networking, and at least five years of experience
`
`designing network communication systems. Ex. 1318, ¶62.
`D. How The Challenged Claims Are To Be Construed
`In this proceeding, claims must be given their broadest reasonable
`
`construction in light of the specification. 37 CFR § 42.100(b). In determining the
`
`broadest reasonable construction of a claim term, the Panel should consider subject
`
`matter that Patent Owner contends infringes the claims or meanings for claim
`terms that Patent Owner has proposed in past or in current litigation.1 Also, if
`Patent Owner contends terms in the claims should be read to have a special
`
`meaning, those contentions should be disregarded unless Patent Owner also
`
`
`1 In the Litigation, Patent Owner has served Infringement Contentions. Ex. 1305.
`
`
`
`
`
`9
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
`
`
`amends the claims in a manner compliant with 35 U.S.C. § 112 to make the claims
`
`expressly correspond to the contended meaning. See 77 Fed. Reg. 48764 at II.B.6
`
`(August 14, 2012); cf. In re Youman, 679 F.3d 1335, 1343 (Fed. Cir. 2012).
`
`The standard of claim construction used in this proceeding differs from the
`
`standard used to interpret claims in a judicial proceeding. Consequently,
`
`constructions the Panel adopts in this proceeding and positions Petitioner takes in
`
`respect of those constructions are not relevant to or binding upon Petitioner in
`
`current or subsequent litigation. See In re Zletz, 13 USPQ2d 1320, 1322 (Fed. Cir.
`
`1989). In particular, Petitioner reserves the right to submit constructions in this
`
`proceeding that differ from those it proposes or adopts in Civil Action No. 2:13-cv-
`
`00213, now pending in the Eastern District of Texas.
`
`Petitioner addresses the meaning of certain claim terms in the course of
`
`comparing the claims to the prior art. In addition to those, Petitioner submits the
`
`following terms for construction.
`
`1.
`
` “First Modulation Method” (Claims 23, 32, 40, 41, 49) And
`“Second Modulation Method” (Claims 23, 32, 40, 49)
`The broadest reasonable interpretation for the claim term “first modulation
`
`method” in light of the specification and the claim language is “a process of
`
`varying characteristic(s) of a carrier wave that is different from a second
`
`modulation method.” Similarly, the broadest reasonable interpretation for the term
`
`“second modulation method” is “a process of varying characteristic(s) of a carrier
`
`wave that is different from a first modulation method.” Ex. 1318, ¶63-64.
`
`The specification of the `580 patent does not supply an explicit definition for
`
`
`
`
`
`10
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
`
`
`these terms. However, the broadest reasonable interpretation is easy to determine.
`
`For example, the words “first” and “second” indicate the modulation methods are
`
`different. Indeed, the “Summary” portion of the `580 patent uses these terms in
`
`manner that indicates that they are not the same, stating that “[f]irst information in
`the first portion may indicate which of the first modulation method or the second
`
`modulation method is used for modulating second information in the payload
`
`portion.” Ex. 1301, 2:35-38 (emphasis added). Moreover, the patent states that the
`
`purported invention allows master transceivers to communicate with modems/tribs
`
`having incompatible modulation methods. See id. at 2:55-57, and Figures 3-7.
`
`This demonstrates that the “first” and “second” modulation methods are different.
`
`Ex. 1318, ¶65-69.
`
`As for the “modulation methods” portion of the claim phrase, the ordinary
`
`meaning of “modulation” is “[t]he process by which some characteristic of a
`
`carrier is varied in accordance with a modulating wave.” See Ex. 1306, “The IEEE
`Standard Dictionary of Electrical and Electronics Terms,” 6th Ed., 1996, p. 662.
`Petitioner submits that this definition of “modulation” is correct. Ex. 1318, ¶70.
`IV. PRECISE REASONS FOR RELIEF REQUESTED
`A.
`Boer Anticipates Or Renders Obvious Claims 23, 25, 30, 32, 34,
`40-41 And 43-44
`1. Overview Of Boer
`Boer was filed on March 14, 1996 and issued on January 6, 1998, making it
`
`prior art under at least 35 U.S.C. § 102(e). Boer discloses a communications
`
`system that is very similar to the one described in the `580 patent. Boer discloses
`
`
`
`
`
`11
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
`
`
`transceivers in stations 12, 18 & 22 that can communicate with each other using
`
`different modulation methods, just as in the `580 patent. Boer teaches that the then
`
`draft IEEE 802.11 wireless LAN standard specified two different data rates. Ex.
`
`1304, Boer, 1:17-22. Boer then states that “[i]t is an object of the present invention
`
`to provide a method of operating a wireless local area network station which
`
`enables communication between stations operating at different data rates.” Id. at
`
`1:27-30 (emphasis added). Boer teaches that the manner in which different data
`
`rates are achieved is through use of different modulation methods. Boer discloses
`
`the use of differential binary phase shift keying (“DBPSK”) modulation when
`
`operating at one Megabit per second (“Mbps”), and differential quadrature phase
`
`shift keying (“DQPSK”) modulation for two Mbps data rate transmission. Id. at
`
`2:23-27. Boer also discloses an additional type of modulation - pulse position
`
`modulation-differential quadrature phase shift keying (“PPM/DQPSK”), which in
`
`Boer operates at five and eight Mbps. Thus, just as described and claimed in the
`
``580 patent, Boer discloses a system for sending transmissions using a first
`
`modulation method and a second modulation. Ex. 1318, ¶71-82.
`
`2. Boer Anticipates Or Renders Obvious Claims 23, 25 And 30
`Turning to claim 23, Boer discloses a “communications device” including a
`
`processor. Ex. 1304, 1:9-15 (“With a view to obviating the need for wired cabling
`
`connections between stations in local area networks (LANs), wireless local area
`
`networks have been developed, and are now commercially available. These
`
`wireless local area networks employ stations, which may be data processing
`
`devices (such as PCs) having a wireless communication capability.”). See also
`
`
`
`
`
`12
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
`
`
`Figures 2 and 3, below:
`
`
`In Figure 2, MAC control unit 30, comprised of C-MST state machine 32, M-MST
`
`
`
`state machine 34, T-MST state machine 36, and R-MST state machine 38, is a
`
`“processor.” In Figure 3, MAC control unit 130 is a “processor.” Ex. 1318, ¶83-84.
`
`Claim 23 requires “a memory having stored therein executable instructions
`
`for execution by the processor.” Boer also describes “a memory” like that recited
`
`in claim 23, e.g., the aforementioned PC, which utilizes executable instructions
`
`that “direct transmission of a first data with a first modulation method.” It is well
`
`known that PC’s contain “memory” and that the processors in Boer will execute
`
`instructions. Ex. 1318, ¶86-87. See also Ex. 1304, Figure 7 (flow chart showing
`
`instructions for controlling station 22). Moreover, it would have been obvious to a
`
`person of ordinary skill in the art to implement Boer’s teachings with a processor
`
`and memory that stores executable instructions that implements Boer’s
`
`functionality. Id. at ¶88.
`
`The executable instructions recited in claim 23 “direct transmission of a first
`
`data with a first modulation method followed by a second data with a second
`
`
`
`
`
`13
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
`
`
`modulation method.” Boer teaches
`
`a message format 200, an
`
`embodiment of which is shown in
`
`Figure 4 to the right. Ex. 1318, ¶90. Messages 200 in Boer comprise several fields,
`
`including a Header 218 comprised, inter alia, of SIGNAL field 206, SERVICE
`
`field 208, and LENGTH field 210. Ex. 1304, 3:42-49. After Header 218, message
`
`200 contains DATA field 214, which also contains the address of the intended
`
`recipient (Id. at 6:28-31). The SIGNAL field 206 and SERVICE field 208 meet
`
`the “first data” limitation of claim 23, while the DATA field 214 meets the “second
`
`data” limitation of claim 23. Ex. 1318, ¶91-92.
`
`Claim 23 requires that the “first data” be transmitted with “a first modulation
`
`method. Boer teaches this because Header 218, which includes SIGNAL field 206
`
`and SERVICE field 208, always uses a first modulation method (DBPSK). Ex.
`
`1304, 3:56-58. (“With regard to the message 200, FIG. 4, it should be understood
`
`that the preamble 216 and header 218 are always transmitted at the 1 Mbps rate
`
`using DBPSK modulation.”). Ex. 1318, ¶94.
`
`Claim 23 also requires that the “first data” be “followed by a second data
`
`with a second modulation method.” As seen in Boer’s figure 4 reprinted above,
`
`DATA field 214 (the “second data”) follows the SIGNAL field 206 and SERVICE
`
`field 208 (the “first data”). See also Ex. 1304, 3:59:62 (“The subsequent DATA
`
`field 214, however, may be transmitted at a selected one of the four possible rates
`
`1, 2, 5 or 8 Mbps, using the modulation and coding discussed hereinabove.”)
`
`(emphasis added). Ex. 1318, ¶96.
`
`14
`
`
`
`
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
`
`
`Moreover, Boer teaches that DATA field 214 may be transmitted using
`
`DQPSK or PPM/DQPSK, either of which is a “second modulation method” since
`
`both are different than DBPSK. Ex. 1304, Abstract (“A wireless LAN includes
`
`first stations adapted to operate at a 1 or a 2 Mbps data rate and second stations
`
`adapted to operate at a 1,2,5 or 8 Mbps data rate. The 1 and 2 Mbps rates use
`
`DBPSK and DQPSK modulation, respectively. The 5 and 8 Mbps rates use
`
`PPM/DQPSK modulation.”) (emphasis added). See also Ex. 1304, 2:23-27
`
`(“When operating at the 1 Mbps data rate, DBPSK (differential binary phase
`
`shift keying) modulation of the RF carrier is utilized, and when operating at the 2
`
`Mbps data rate DQPSK (differential quadrature phase shift keying) modulation
`
`of the RF carrier is utilized.”); 2:37-44 (“The stations 22 can operate at a 1 Mbps
`
`or a 2 Mbps data rate, using the same modulation and DSSS coding as the stations
`
`18, and in addition can also operate at two higher data rates, namely 5 Mbps and 8
`
`Mbps. These 5 and 8 Mbps data rates utilize PPM/DQPSK (pulse position
`
`modulation--differential quadrature phase shift keying) in combination with
`
`the 11-chip Barker code mentioned hereinabove.”) (emphasis added). Ex. 1318,
`
`¶97.
`
`DBPSK is plainly a different “modulation method” than DQPSK. Ex. 1318,
`
`¶77, 81-82, 98-99. This can be seen in the
`
`figure reprinted here, where the upper
`
`waveform shows a how “11000110” is
`
`modulated onto a carrier using DBPSK, while the bottom waveform shows how
`
`the same data is modulated onto a carrier using DQPSK. See Ex. 1318, ¶98.
`
`
`
`
`
`15
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
`
`
`These two modulated signals are plainly incompatible since a modem designed to
`
`demodulate one would be incapable of demodulating the other. See Ex. 1318, ¶99.
`
`Claim 23 next requires that the “first da