Samsung Petitioners’ Presentation
`
`Inter Partes Review of Patent Owner’s U.S. Patent No. 8,023,580
`
`April 24, 2015
`
`IPR2014-00518, 00519
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`
`Samsung Exhibit 1326
`Samsung v. Rembrandt
`IPR2014-00519
`Page 00001
`
`
`
`Inter Partes Review of Patent Owner’s U.S. Patent No. 8,023,580
`
`April 24, 2015
`
`IPR2014-00518, 00519
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`
`Samsung Exhibit 1326
`Samsung v. Rembrandt
`IPR2014-00519
`Page 00001
`
`
`
`Abbreviations
`
`Abbreviation
`
`P1
`
`P2
`
`Opp1
`Opp2
`
`Reply1
`
`Reply2
`
`Description
`IPR2014-00518, Paper 4, Amended Petition for Inter Partes
`Review of U.S. Patent No. 8,023,580
`IPR2014-00519, Paper 4, Amended Petition for Inter Partes
`Review of U.S. Patent No. 8,023,580
`IPR2014-00518, Paper 25, Patent Owner’s Opposition
`IPR2014-00519, Paper 25, Patent Owner’s Opposition
`IPR2014-00518, Paper 32, Petitioners’ Reply to Patent
`Owner’s Opposition
`IPR2014-00519, Paper 34, Petitioners’ Reply to Patent
`Owner’s Opposition
`
`2
`
`
`
`Technology At Issue
`
`Problems In Prior Art, As Identified In ’580 Patent:
`
`“[C]ommunication between modems is
`generally unsuccessful unless a common
`modulation method is used.”
`* * *
`“If 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.”
`
`Ex. 1201/1301 (’580 Patent) at Fig. 1, 1:45-47; 1:58-61; P1 at 3, 11; P2 at 3.
`
`3
`
`
`
`Technology At Issue
`
`Purported Invention:
`“[W]hat 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.”
`
`“The present invention relates generally 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. 1201/1301 (’580 Patent) at 2:16-20; 1:19-23; P1 at 3-4; P2 at 3-4.
`
`Ex. 1201/1301 (’580 Patent), Fig. 4.
`
`4
`
`
`
`All Claims At Issue Are Unpatentable Under 35 USC § 103
`As Obvious Over APA And Boer
`Admitted Prior Art (“APA”)
`U.S. Patent No. 5,706,428 (“Boer”)
`(Ex. 1201/1301)
`(Ex. 1204/1304)
`
`“FIG. 1 is a block diagram of a prior art multipoint
`communication system including a master
`transceiver and a plurality of tributary transceivers;”
`Ex. 1201/1301 (’580 Patent) at 3:6-8, Fig. 1;
`P1 at 6, 14; P2 at 6, 37.
`
`“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.”
`Ex. 1204/1304 (Boer) at Abstract; P1 at 16, 20; P2 at 12, 15.
`
`• Patent Owner’s response does not
`dispute that master-slave systems
`were known in the art.
`
`Reply1 at 6; Reply2 at 6.
`
`• Boer discloses all other limitations of
`the instituted patent claims.
`P1 Claim Charts; P2 Claim Charts.
`
`5
`
`
`
`Key Issues
`
`• Whether Boer discloses different “types of
`modulation methods.”
`• Only relevant to independent claims 1 and 58, and
`claims dependent from them (claims 4, 5, 10, 13,
`20-22, 38, 61, 62, 66, 70, 76-79).
`• Not relevant to claims 38, 47, 54, 57.
`
`• Whether there was a motivation to combine
`the APA and Boer.
`
`Reply1 at 1; Reply2 at 1.
`
`6
`
`
`
`Issue: Whether Boer Discloses Different
`“Types Of Modulation Methods”
`
`7
`
`
`
`Independent Claim 1
`
`[1a] 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:
`[1b] 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,
`[1c] wherein the at least two types of modulation methods comprise a first modulation method and a second modulation method,
`[1d] wherein the second modulation method is of a different type than the first modulation method,
`[1e] 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
`[1f] 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
`[1g] 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:
`[1h] 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,
`[1i] wherein the first sequence indicates an impending change from the first modulation method to the second modulation
`method, and
`[1j] 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,
`[1k] wherein the second sequence is transmitted after the first sequence.
`
`Ex. 1201/1301 (’580 Patent) at 7:53-8:19; P1 at 28-33.
`
`8
`
`
`
`Petitioners’ Construction Of
`“At Least Two Types Of Modulation Methods”
`Is Consistent With The Purpose Of The Alleged Invention
`Petitioners’ Proposed Construction
`Patent Owner’s Proposed Construction
`“at least two incompatible processes of
`“different families of modulation techniques”
`varying characteristic(s) of a carrier wave”
`
`“If 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.
`* * *
`Accordingly, 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.
`
`* * *
`Another advantage of the present invention is that a master transceiver can
`communicate seamlessly with tributary transceivers or modems using incompatible
`modulation methods.”
`
`Ex. 1201 (’580 Patent) at 1:58-61, 2:16-20, 2:55-57; P1 at 3, 11.
`
`9
`
`
`
`Petitioners’ Construction Of
`“At Least Two Types Of Modulation Methods”
`Is Consistent With The Specification
`Petitioners’ Proposed Construction
`Patent Owner’s Proposed Construction
`“at least two incompatible processes of
`“different families of modulation techniques”
`varying characteristic(s) of a carrier wave”
`
`“Control program 92 includes logic for implementing a particular
`modulation method, which, for purposes of illustration, is called
`type X[.] Inasmuch as master transceiver 64 is capable of running
`either a type A or a type B modulation method, type X refers to one
`of those two modulation methods.
`* * *
`Referring now to FIG. 4, a multipoint communication system 100 is
`shown comprising a master transceiver 64 along with a plurality of
`tribs 66-66. In this example, two tribs 66a-66a run a type A modulation
`method while one trib 66b runs a type B modulation method.”
`
`Ex. 1201 (’580 Patent) at Fig. 4, 5:39-44, 5:49-51;
`P1 at 4, 12-13; see also Ex. 1220 (Goodman Decl.) ¶ 48.
`
`10
`
`
`
`Patent Owner’s Construction Of
`“At Least Two Types Of Modulation Methods”
`Gives Improper Significance To Prosecution Statement
`Petitioners’ Proposed Construction
`Patent Owner’s Proposed Construction
`“at least two incompatible processes of
`“different families of modulation techniques”
`varying characteristic(s) of a carrier wave”
`
`1. (Currently Amended) A communication system 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
`transmitter capable of transmitting transmissions modulated 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, ...
`Ex. 1209 (3/1/11 Reply to Office Action) at 7; P1 at 12.
`
`Allowable Subject Matter
`Applicant thanks Examiner Ha 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. Support for the clarifying amendments can be
`found throughout the specification, for example [0024], [0025] and [0031] - [0036].
`
`Ex. 1209 (3/1/11 Reply to Office Action) at 20; P1 at 11-12.
`
`11
`
`
`
`Patent Owner’s Construction Of
`“At Least Two Types Of Modulation Methods”
`Is Inconsistent With The Specification
`Petitioners’ Proposed Construction
`Patent Owner’s Proposed Construction
`“at least two incompatible processes of
`“different families of modulation techniques”
`varying characteristic(s) of a carrier wave”
`
`• The term “families” is never used in the specification.
`• Under Patent Owner’s interpretation of families, none of the examples in
`the specification satisfy the claim limitations because they all share at
`least one characteristic.
`
`P1 at 12; Reply1 at 10-11.
`
`“For example, some applications (e.g., internet access) require high performance
`modulation, such as quadrature amplitude modulation (QAM), carrier amplitude
`and phase (CAP) modulation, or discrete multitone (DMT) modulation,”
`
`Ex. 1201 (’580 Patent) at 2:1-5; Reply1 at 10-11.
`
`12
`
`
`
`Patent Owner’s Interpretation Of “Type” Is Nonsensical
`
`Petitioners’ Proposed Construction
`“at least two incompatible processes of
`varying characteristic(s) of a carrier wave”
`
`Patent Owner’s Proposed Construction
`“different families of modulation techniques”
`
`A. . . . So, for example, phase has a characteristic for transmitting information that’s shared
`with DMT and with QAM and with CAP.
`So they’re not different types of modulation methods because they share – they’re not
`different types of modulation methods because they share at least one characteristic.
`They are different modulation methods because they differ in at least one
`characteristic, but they are not different types of modulation methods.
`Q. So is – just so we understand what your testimony is, when you say that QAM, CAP, and
`DMT are not different types of modulation methods, does that mean that they are the same
`type of modulation method?
`A. I do not know the answer to that. I just know that they’re not different types of modulation
`methods. . . .
`So I can say that they are different types or I can say that they’re not different types.
`But saying whether or not they’re the same is difficult. I don't know the answer.
`Ex. 1221 (Jones Dep.) at 165:20-166:13, 166:20-23; Reply1 at 10-11.
`
`13
`
`
`
`Patent Owner’s Construction Of
`“At Least Two Types Of Modulation Methods”
`Is Inconsistent With Other Claims
`Petitioners’ Proposed Construction
`Patent Owner’s Proposed Construction
`“at least two incompatible processes of
`“different families of modulation techniques”
`varying characteristic(s) of a carrier wave”
`• Patent Owner’s construction is impossible to square with its
`subsequent prosecution of a continuation to the ’580 patent:
`
`Claim 26: “at least two different types of modulation methods,
`the at least two different types of modulation methods
`comprising a first modulation method and a second modulation
`method”
`
`Ex. 1223 (’228 Patent) at 11:42-44; Reply1 at 11-12.
`
`Claim 43: “wherein at least one of said first or second
`modulation methods implements phase modulation.”
`
`Ex. 1223 (’228 Patent) at 13:5-6; Reply1 at 11-12.
`
`14
`
`
`
`Under Either Proposed Construction:
`Boer Discloses Different “Types Of Modulation Methods”
`
`• Boer discloses multiple different types of modulation methods:
`DBPSK, DQPSK, and PPM/DQPSK.
`P1 at 16, 20-21; see Ex. 1204 (Boer) at Abstract, 2:23-27, 2:41-44.
`
`DBPSK and DQPSK
`DBPSK and PPM/DQPSK
`
`Under Petitioners’
`Construction
`Are different “types”
`Are different “types”
`
`Under Patent Owner’s
`Construction
`Are not different “types”
`Are different “types”
`
`P1 at 20-21; Reply1 at 9-10, 13-15; Ex. 1220 (Goodman Decl.) ¶¶ 111, 118-25, 212-15.
`
`15
`
`
`
`DBPSK And DQPSK Are Different “Types Of
`Modulation Methods” Under Petitioners’ Construction
`
`• The illustration below shows how DBPSK and DQPSK would
`modulate “11000110.”
`
`P1 at 20; Ex. 1220 (Goodman Decl.) ¶ 122.
`
`• DBPSK and DQPSK are different types of modulation methods:
`“A modem designed to demodulate one transmission would be
`incapable of demodulating the other, which demonstrates that these
`two modulated signals are incompatible with each another.”
`Ex. 1220 (Goodman Decl.) ¶ 122; P1 at 20-21.
`
`16
`
`
`
`DBPSK And PPM/DQPSK Are Different “Types Of
`Modulation Methods” Under Either Party’s Construction
`
`Exs. 1227, 1228, 1229 (Jones Illustrations); Reply1 at 14.
`
`109. In pulse position modulation (PPM), referred to by Boer, the timing (start and stop time) of a
`transmission varies in response to the information to be transmitted. PPM can be used in
`combination with one of the other modulation techniques. Using PPM/DQPSK, modulation, for
`example, it is possible to represent five bits (32 possible waveforms) per modulation symbol with
`four possible phase or phase differences and 8 possible start/stop times per symbol.
`
`Ex. 1220 (Goodman Decl.) at ¶109; P1 at 20.
`
`17
`
`
`
`DBPSK And PPM/DQPSK Are Different “Types Of
`Modulation Methods” Under Either Party’s Construction
`
`123. It is my opinion that PPM/DQPSK is a different ‘type’ of modulation than DBPSK
`under any possible claim construction. With the DBPSK modulation method, a carrier is
`modulated with data by varying its phase, where a phase shift of 180 degrees indicates a
`binary ‘1’ and a zero degree phase shift indicates a binary ‘0.’
`124. In contrast, with a pulse position modulation (PPM) method, the start and stop time of a
`transmission is varied in response to the information to be transmitted, with this time shift
`being indicative of data bits. Phase is not used, meaning that even under Patent Owner’s
`potential construction, Boer teaches the use of a different ‘type’ of modulation since PPM is a
`different ‘family’ of modulation. Note that in Boer, pulse position modulation is used in
`combination with DQPSK modulation, but the fact that PPM modulation is used means that
`PPM/DQPSK modulation is a different ‘family’ of modulation than DBPSK modulation.
`
`Ex. 1220 (Goodman Decl.) ¶¶ 123-24; P1 at 20-21.
`
`18
`
`
`
`DBPSK And PPM/DQPSK Are Different “Types Of
`Modulation Methods” Under Either Party’s Construction
`
`Patent Owner: DBPSK and PPM/DQPSK are both phase
`modulation techniques and not in different “families.”
`
`Opp1 at 53.
`
`• Nothing in either party’s construction requires that a modulation method
`vary only the phase, amplitude, or frequency of a carrier wave.
`Reply1 at 14; Ex. 1220 (Goodman Decl.) ¶¶ 123-24.
`
`Q. The selection of the time at which the sine wave is going to be transmitted, that doesn’t alter the
`characteristics of the sine wave itself, does it; is that correct?
`A. It doesn’t alter the frequency or the amplitude, needn’t alter the phase. But I would say that the
`timing itself is a characteristic, within the context of information transmission, the timing is
`certainly a characteristic of the sine wave.
`
`Ex. 2211 (Goodman IPR Dep.) at 31:9-19; Reply1 at 14.
`• DBPSK has two symbols, with each symbol representing one bit.
`•
`5 Mbps PPM/DQPSK uses thirty-two symbols, with each symbol representing
`five bits. Two bits of each symbol are represented by the phase of the
`transmission and three bits of each symbol are represented by the slot in which
`the transmission embodying the phase change is located.
`Reply1 at 12-13; Ex. 1220 (Goodman Decl.) ¶ 109.
`
`19
`
`
`
`DBPSK And PPM/DQPSK Are Different “Types Of
`Modulation Methods” Under Either Party’s Construction
`
`Patent Owner: PPM as used in Boer’s PPM/DQPSK is an encoding
`technique not a modulation method.
`
`Opp1 at 48-52.
`
`• PPM stands for “pulse position modulation.”
`P1 at 21; Ex. 1220 at ¶ 109.
`
`• Patent Owner’s argument that PPM is not modulation makes no sense.
`
`Q. So as I understand your position, for the 5 Mbps PPM/DQPSK
`modulation, it’s your opinion that some of the bits are not modulated
`because they are pulse position modulated; is that right?
`A. Correct.
`
`Ex. 1221 (Jones Dep.) at 92:25-93:4; Reply1 at 13.
`
`20
`
`
`
`DBPSK And PPM/DQPSK Are Different “Types Of
`Modulation Methods” Under Either Party’s Construction
`
`Patent Owner: PPM as used in Boer’s PPM/DQPSK is an encoding
`technique not a modulation method.
`
`Opp1 at 48-52.
`
`•
`
`Boer uses the terms “coding” and “modulation” interchangeably.
`Reply1 at 15; Ex. 1220 (Goodman Decl.) ¶ 124; Ex. 1221 (Jones Dep.) at 63:12-64:10.
`
`“The rate selector 42 and scrambler 44
`are connected to a l-out-of-2 encoder 46
`which encodes the data bits from the
`scrambler 44 in accordance with the
`selected 1 or 2 Mbps data rate.”
`Ex. 1204 (Boer) at 3:6-9.
`
`•
`
`“Boer uses the term ‘encoder’ for the
`component 46 that generates the
`DBPSK and DQPSK modulated
`signals (Ex. 1204, 3:6-9).”
`
`Reply1 at 15.
`
`Ex. 1204 (Boer) at Fig. 2.
`
`21
`
`
`
`Issue: Whether There Was A Motivation To
`Combine The APA And Boer
`
`22
`
`
`
`It Would Have Been Obvious To A POSITA To Combine
`The APA With Boer
`
`“[W]hen a patent ‘simply arranges old elements with each
`performing the same function it had been known to perform’
`and yields no more than one would expect from such an
`arrangement, the combination is obvious.”
`
`* * *
`“When there is a design need or market pressure to solve a
`problem and there are a finite number of identified, predictable
`solutions, a person of ordinary skill has good reason to pursue
`the known options within his or her technical grasp. If this leads
`to the anticipated success it is likely the product not of
`innovation but of ordinary skill and common sense.”
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417, 421 (2007);
`Reply1 at 5-6; Reply2 at 6.
`
`23
`
`
`
`Master/Slave Was One Of
`The Most Widely Used Protocols
`
`“Polled multiport master/slave communications systems were well known
`[to] those having ordinary skill in the art in the relevant time-period.
`Such systems were known for simplicity and determinacy. [Upender at
`50]. Simplicity and determinacy are additional motivations to combine
`Boer with the master/slave communication system the ’580 patent admits
`is in the prior art.”
`
`Ex. 1220 (Goodman Decl.) ¶ 103; Ex. 1318 (Goodman Decl.) ¶ 169; P1 at 18; P2 at 41; Reply1 at 4; Reply2 at 4.
`
`“Polling is one of the more popular protocols for embedded systems….”
`
`Ex. 1218/1317 (Upender) at 50; P1 at 18; Reply1 at 2; P2 at 41; Reply2 at 2-3.
`
`“[I]f you want to look at the entire world, there are probably more
`master/slave systems….”
`
`Ex. 1238/1319 (Koopman Dep.) at 73:4-20; Reply1 at 2, 6; Reply2 at 3, 6.
`
`24
`
`
`
`Patent Owner’s Expert Admits That
`Master/Slave Protocol Was Obvious To Use
`
`“The fact that [master/slave] was simple would lead them to consider it
`in applications where simple was important.”
`
`Ex. 1238/1319 (Koopman Dep.) at 115:12-116:20; Reply1 at 4; Reply2 at 4.
`
`“[I]f you want determinacy that would – that would keep master/slave
`on your list of candidates.”
`
`Ex. 1238/1319 (Koopman Dep.) at 119:14-120:3; Reply1 at 3; Reply2 at 4.
`
`“There are some systems for which master/slave is clearly a better match
`for the design requirements.”
`
`Ex. 1238/1319 (Koopman Dep.) at 39:2-20; Reply1 at 8; Reply2 at 9.
`
`25
`
`
`
`Upender Teaches That Tradeoffs Can Be Evaluated To
`Select A Protocol That Meets The Designer’s Needs
`
`“[N]o protocol is perfect for all purposes.”
`
`Ex. 1218/1317 (Upender) at 46; Reply1 at 5; Reply2 at 5.
`
`“[T]his article’s discussion of the special
`considerations and media access protocol
`strengths and weaknesses should allow you to
`select the best protocol to match your needs.”
`
`Ex. 1218/1317 (Upender) at 57; Reply1 at 5; Reply2 at 5.
`
`• And Patent Owner admits:
`“One of skill in the art would know that there are significant tradeoffs in the
`selection of a communications protocol. [Ex. 2208/2302 (Koopman Decl.) at
`¶ 98.] The choice of system configuration requires the balancing of several
`of the capabilities and limitations of the protocol and equipment. [Ex.
`2208/2302 (Koopman Decl.) at ¶ 99.]”
`
`Opp1 at 39; Opp2 at 36.
`
`26
`
`
`
`Simplicity And Determinacy Are Important Considerations
`In Selecting A Media Access Control Protocol
`
`“Determinacy, or the ability to calculate worst-case response
`time, is important for meeting the real-time constraints of many
`embedded control applications.”
`
`* * *
`
`“A vital consideration is the cost per node. In this article, the
`order of the media access discussion progresses from very
`simple to complex, high-performance protocols. . . . Simple
`protocols require less hardware and software resources and are
`therefore likely to be less expensive.”
`
`Ex. 1218/1317 (Upender) at 47; Reply1 at 2-3; Reply2 at 3;
`see also, e.g., P1 at 18; Ex. 1218/1317 (Upender) at 50.
`
`27
`
`
`
`Simplicity And Determinacy Are Reasons
`A POSITA Would Choose A Master/Slave Protocol
`
`A POSITA valuing determinacy and simplicity would have been motivated to
`use Boer’s invention in a master/slave system.
`Ex. 1220 (Goodman Decl.) ¶¶ 100-01; Ex. 1318 (Goodman Decl.) ¶¶ 166-67; Reply 1 at 1 n.1, 4; Reply 2 at 2 n.1, 4.
`
`“Simplicity and determinacy are additional
`motivations to combine Boer with the
`master/slave communication system the
`’580 patent admits is in the prior art.”
`
`Ex. 1220 (Goodman Decl.) at ¶ 103; Ex. 1318 (Goodman Decl.) ¶ 169.
`
`28
`
`
`
`The Architectures Of The APA And Boer
`Are Strikingly Similar
`
`Admitted Prior Art In `580 Patent
`
`Boer
`
`P1 at 17-18; P2 at 39-40; Ex. 1220 (Goodman Decl.) ¶ 97; Ex. 1318 (Goodman Decl.) ¶ 163.
`
`29
`
`
`
`Flexibility And Efficiency Are Reasons To Combine
`The APA With Boer
`Patent Owner: Simplicity and determinacy are at odds with flexibility
`and efficiency.
`
`Opp1 at 29-32; Opp2 at 26-29.
`
`• But PO is simply conflating two arguments.
`
`Opp1 at 29; Opp2 at 26; Reply1 at 1 n.1; Reply2 at 2 n.1.
`
`• Employing Boer’s teaching of multiple modulation techniques would increase
`the flexibility and efficiency of the master/slave systems of the APA.
`P1 at 16-18; P2 at 38-40; Reply1 at 6; Reply2 at 7;
`Ex. 1220 (Goodman Decl.) ¶¶ 96, 100-02; Ex. 1318 (Goodman Decl.) ¶¶ 162, 166-68.
`
`– Provides flexibility in ability to use multiple modulation methods.
`Ex. 1220 (Goodman Decl.) ¶¶ 100-02; Ex. 1318 (Goodman Decl.) ¶¶ 166-68;
`P1 at 18;P2 at 40; Reply1 at 6; Reply2 at 7.
`
`• As confirmed by Upender, employing the APA’s master slave protocol would
`increase simplicity and determinacy in Boer.
`P1 at 18; P2 at 41; Ex. 1220 (Goodman Decl.) ¶ 103; Ex. 1318 (Goodman Decl.) ¶ 169.
`
`30
`
`
`
`The Combination Of The APA With Boer
`Yields Predictable Results
`
`“A combination is obvious if such combination simply brings
`together known elements, with each element performing the same
`function as they do separately to yield predictable results.”
`
`KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007); Reply1 at 5-6; Reply2 at 5-7.
`
`“A person having ordinary skill in the art would have been motivated to combine
`Boer with the APA because the combination would increase the flexibility and
`efficiency of prior art master/slave communication systems, thus allowing the
`APA master/slave network to adapt to the needs of applications. [Ex. 1220
`(Goodman Decl.) ¶¶ 100-01; Ex. 1318 (Goodman Decl.) ¶¶ 166-67.]”
`
`P1 at 18; P2 at 40.
`
`“Simplicity and determinacy are additional motivations to combine Boer with
`the master/slave communication system the ’580 patent admits is in the prior
`art. [Ex. 1220 (Goodman Decl.) ¶¶ 102-03; Ex. 1318 (Goodman Decl.) ¶¶ 168-
`69.]”
`
`P1 at 18; P2 at 41.
`
`31
`
`
`
`Patent Owner’s Arguments Are Legally And Factually
`Insufficient To Show Teaching Away
`
`Teaching away requires more than arguing that an alternative combination is
`better – the prior art has to provide “clear discouragement of that combination.”
`
`Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005); Reply1 at 9; Reply2 at 9.
`
`“[J]ust because better alternatives exist in the prior art does not mean that an
`inferior combination is inapt for obviousness purposes.”
`
`In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012); Reply1 at 8; Reply2 at 8.
`
`32
`
`
`
`Upender Does Not “Teach Away”
`From Combining Boer with the APA
`Patent Owner: Upender teaches away from using master/slave in Boer
`because Upender shows there are disadvantages to master/slave protocols.
`Opp1 at 38-40; Opp2 at 35-38.
`
`• But Dr. Koopman admitted that in some applications master/slave is actually
`the better choice.
`
`Reply1 at 8; Reply2 at 9; Ex. 1238/1319 (Koopman Dep.) at 39:2-20.
`
`“There are some systems for which master/slave is clearly a better match for the
`design requirements.”
`
`Ex. 1238/1319 (Koopman Dep.) at 39:2-20; Reply1 at 8; Reply2 at 9.
`
`• And Upender itself states that readers can use its teachings to “select the best
`protocol to match your needs.”
`
`Reply1 at 8-9; Reply2 at 9; Ex. 1218/1317 (Upender) at 57.
`
`33
`
`
`
`Upender Provides A Motivation To Combine
`The APA With Boer
`
`• The Upender authors’ endorsement of a different protocol for their
`own application does not contradict Dr. Goodman’s conclusions on
`the combination of Boer and the APA.
`
`“While your application will no doubt have characteristics that are
`somewhat different than ours, this article’s discussion of the special
`considerations and media access protocol strengths and weaknesses
`should allow you to select the best protocol to match your needs.”
`Ex. 1218/1317 (Upender) at 56-57; Reply1 at 8-9; Reply2 at 9.
`
`34
`
`
`
`Dr. Koopman’s Testimony Does Not Change Upender Or
`Detract From Motivation To Combine The APA With Boer
`Patent Owner: Dr. Koopman, based on “know[ing] more” as co-author,
`disagrees that Upender supports motivation to combine.
`
`Opp1 at 33; Opp2 at 30.
`
`[T]he Federal Circuit has “serious reservations about the propriety
`of supplementing or clarifying” the teachings of prior art with
`expert testimony from prior art’s author, as such information is
`“not intrinsically available” to readers of the prior art.
`Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 888 (Fed. Cir. 1984);
`Reply1 at 9 & n.2; Reply2 at 9-10 & n.2.
`
`“While your application will no doubt have characteristics that are
`somewhat different than ours, this article’s discussion of the special
`considerations and media access protocol strengths and weaknesses
`should allow you to select the best protocol to match your needs.”
`Ex. 1218/1317 (Upender) at 56-57; Reply1 at 8-9; Reply2 at 9.
`
`35
`
`
`
`Dr. Koopman’s Testimony Does Not Change Upender Or
`Detract From Motivation To Combine The APA With Boer
`Patent Owner: Dr. Koopman, based on “know[ing] more” as co-author,
`disagrees that Upender supports motivation to combine.
`
`Opp1 at 33; Opp2 at 30.
`
`• Dr. Koopman admitted that a POSITA valuing simplicity and
`determinacy would consider using a master/slave protocol.
`Reply1 at 3-4; Reply2 at 4.
`
`“[I]f you want determinacy that would – that would keep master/slave on your list of
`candidates.”
`
`Ex. 1238/1319 (Koopman Dep.) at 119:14-120:3; Reply1 at 3; Reply2 at 4.
`
`In a “nondeterministic” protocol, there is a “probability that collisions among transmitters
`can recur until they abort and then recur again so no messages ever get delivered[].”
`Ex. 1232/1320 (Koopman FAA Handbook) at A-10; Reply1 at 3; Reply2 at 3.
`
`“The fact that [master/slave] was simple would lead them to consider it in applications
`where simple was important.”
`
`Ex. 1238/1319 (Koopman Dep.) at 115:12-116:20; Reply1 at 4; Reply2 at 4.
`
`“There are some systems for which master/slave is clearly a better match for the design
`requirements.”
`
`Ex. 1238/1319 (Koopman Dep.) at 39:2-20; Reply1 at 8; Reply2 at 9.
`
`36
`
`
`
`Dr. Koopman’s Testimony Does Not Change Upender Or
`Detract From Motivation To Combine The APA With Boer
`Patent Owner: Dr. Koopman argues that tradeoffs “teach away” from
`replacing the CSMA/CA protocol of Boer with master/slave.
`
`Opp1 at 38-40; Opp2 at 35-38.
`
`• But a POSITA would be motivated to replace CSMA/CA protocol of
`Boer with master/slave protocol of the APA.
`Reply1 at 4-5; Reply2 at 4-5; Ex. 1220 (Goodman Decl.) ¶¶ 100-04; Ex. 1318 (Goodman Decl.) ¶¶ 166-70.
`
`• As Dr. Koopman testified, the CSMA/CA protocol used by Boer
`corresponds to what Upender calls “CSMA/CD.”
`Reply1 at 4; Reply2 at 4-5; Ex. 2208/2302 (Koopman Decl.) ¶¶ 73-78.
`
`• This protocol has disadvantages a POSITA may wish to overcome.
`Reply1 at 4; Reply2 at 4-5.
`
`– Upender clearly states that CSMA/CD has poor determinacy.
`Ex. 1218/1317 (Upender) at 47, 54.
`– Dr. Koopman admitted that CSMA/CD has poor determinacy.
`Ex. 1238/1319 (Koopman Dep.) at 128:19-129:7.
`– Boer itself states that CSMA/CA can experience collisions.
`
`Ex. 1204/1304 (Boer) at 4:25-40.
`
`37
`
`
`
`Patent Owner’s Asserted “Advantages” Of CSMA/CA
`Do Not Teach Away From The Claimed Invention
`
`Patent Owner: The CSMA/CA protocol is more “efficient” than master/slave
`because it results in less overhead.
`
`Opp1 at 35-37; Opp2 at 33-35.
`
`• Dr. Koopman refers to reduced data “overhead” as “efficiency.”
`Opp1 at 35-37; Opp2 at 33-35; Ex. 2208/2302 (Koopman Decl.) ¶¶ 69, 80.
`
`• But the ’580 patent does not discuss that type of “efficiency”:
`– Dr. Koopman admitted that overhead is not a claimed feature.
`
`Reply1 at 7-8; Reply2 at 7; Ex. 1238/1319 (Koopman Dep.) at 178:3-11.
`
`• Schrader-Bridgeport Int’l, Inc. v. Continental Auto. Sys., Inc., IPR2013-00014,
`Paper 32 at 11 (Mar. 12, 2014) (rejecting unclaimed feature as basis to argue
`against motivation to combine).
`
`38
`
`
`
`Patent Owner’s Asserted “Advantages” Of CSMA/CA
`Do Not Teach Away From The Claimed Invention
`
`Patent Owner: Boer uses CSMA/CA, rather than master/slave, in order to
`reduce overhead.
`
`Opp1 at 40-41; Opp2 at 40.
`
`• But Boer never discourages master/slave:
`– The portion of Boer cited by Patent Owner as supposedly “teaching away”
`says nothing about CSMA/CA contributing to a reduction in overhead.
`Opp1 at 40; Opp2 at 40.
`– Instead, Boer says using short acknowledgment messages provides the
`benefit of reduction in overhead.
`
`“An advantage of using the short ACK message 400 (FIG.6) is a significant
`reduction of the overhead-in-time per transmission.”
`Ex. 1204/1304 (Boer) at 8:29-30; Reply1 at 8; Reply2 at 8.
`
`39
`
`
`
`Patent Owner’s Asserted “Advantages” Of CSMA/CA
`Do Not Teach Away From The Claimed Invention
`
`Patent Owner: The CSMA/CA protocol is more “flexible” than master/slave
`because it can support a larger network and allow stations to enter and leave
`the network.
`
`Opp1 at 35-37; Opp2 at 33-35.
`
`• Dr. Koopman refers to ability to allow stations to enter/leave network
`and support for a large network as “flexibility.”
`Opp1 at 35-37; Opp2 at 33-35; Ex. 2208/2302 (Koopman Decl.) ¶¶ 68, 71-72, 81.
`
`• But the ’580 patent does not discuss that type of “flexibility”:
`– Dr. Koopman admitted that ability for stations to enter/leave network and
`network size are not claimed features.
`Reply1 at 7-8; Reply2 at 7-8; Ex. 1238/1319 (Koopman Dep.) at 175:14-176:7, 177:13-178:2;
`see also Ex. 1238/1319 (Koopman Dep.) at 156:2-11 (“I would say for this patent, the number of stations is not relevant.”).
`
`• Schrader-Bridgeport Int’l, Inc. v. Cont’l Auto. Sys., Inc., IPR2013-00014,
`Paper 32 at 11 (Mar. 12, 2014) (rejecting unclaimed feature as basis to argue
`against motivation to combine).
`
`40
`
`
`
`Summary Of Challenged Claims
`
`
`
`Instituted Claims Of The ’580 Patent
`
`IPR
`
`IPR2014-00518
`
`Claims
`1, 4, 5, 10, 13, 20-22,
`54, 57, 58, 61, 62, 66,
`70, 76-79
`IPR2014-00519
`(After Rembrandt’s Disclaimer) 38, 47
`
`42
`
`
`
`Shared Claim Limitations
`Independent Claims 1, (32), (40), 54, 58
`
`1. Transceiver or device in master/slave or
`multipoint communications protocol
`2. At least two different modulation methods
`3. First data/sequence in first modulation
`method; second data/sequence in second
`modulation method
`Indication or notification of an impending
`change from first modulation method second
`modulation method
`
`4.
`
`P1 at 1
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