IPR2014-00519
`U.S. Patent No. 8,023,580
`
`By: Thomas Engellenner
`Pepper Hamilton LLP
`125 High Street
`19th Floor, High Street Tower
`Boston, MA 02110
`(617) 204-5100 (telephone)
`(617) 204-5150 (facsimile)
`
`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 No. IPR2014-00519
`Patent 8,023,580
`
`___________________
`
`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107
`
`

`
`TABLE OF CONTENTS
`
`IPR2014-00519
`U.S. Patent No. 8,023,580
`
`Page
`
`I.
`
`II.
`
`INTRODUCTION .......................................................................................... 1
`
`OVERVIEW OF THE ’580 PATENT ........................................................... 2
`
`III. CLAIM CONSTRUCTION AND ORDINARY SKILL IN THE ART........ 3
`
`A.
`
`B.
`
`A Person Having Ordinary Skill In The Art ........................................ 3
`
`Claim Construction............................................................................... 4
`
`IV.
`
`PETITIONER’S ALLEGED “ADMITTED PRIOR ART” CANNOT
`SERVE AS BASIS FOR INSTITUTING TRIAL ......................................... 9
`
`1.
`
`2.
`
`3.
`
`The Doctrine Of Admitted Prior Art Is Not Applicable
`To An Inventor’s Own Work..................................................... 9
`
`The Decisions Regarding Admitted Prior Art Cited By
`Petitioner Are Inapposite ......................................................... 11
`
`The Inventor’s Own Identification of the Problem to be
`Solved is Inseparable From the Invention as a Whole and
`Cannot Be Considered Admitted Prior Art.............................. 13
`
`V.
`
`THERE IS NO REASONABLE LIKELIHOOD THAT CLAIMS 23,
`25, 30, 41, 44, 29, 38 OR 47 ARE ANTICIPATED BY BOER OR
`RENDERED OBVIOUS IN VIEW OF BOER, ALONE OR IN
`VIEW OF COMBINATION OF ALLEGED APA AND BOER................ 15
`
`A.
`
`B.
`
`C.
`
`Summary of Boer ............................................................................... 16
`
`The Petition Fails To Demonstrate Any Motivation To
`Combine The Alleged APA With Boer ............................................. 19
`
`The Petition Does Not Demonstrate A Reasonable Likelihood
`That Claims 23, 25, Or 30 Are Anticipated By, Or Rendered
`Obvious In View of Boer ................................................................... 24
`
`1.
`
`Anticipation.............................................................................. 24
`
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`IPR2014-00519
`U.S. Patent No. 8,023,580
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`Page
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`2.
`
`Obviousness ............................................................................. 27
`
`D.
`
`E.
`
`Petition Does Not Demonstrate A Reasonable Likelihood That
`Claims 41 Is Anticipated By Boer ..................................................... 28
`
`The Petition Fails To Demonstrate A Reasonable Likelihood
`That Claims 29, 38 And 47 Are Rendered Obvious By Alleged
`APA In View of Boer......................................................................... 30
`
`1.
`
`2.
`
`3.
`
`The Petition Does Not Demonstrate A Reasonable
`Likelihood That Combination Of Alleged APA And Boer
`Renders Claim 29 Obvious ...................................................... 30
`
`The Petition Does Not Demonstrate A Reasonable
`Likelihood That Combination Of Alleged APA And Boer
`Renders Claim 38 Obvious ...................................................... 31
`
`The Petition Does Not Demonstrate A Reasonable
`Likelihood That Combination Of Alleged APA And Boer
`Renders Claim 47 Obvious ...................................................... 31
`
`VI.
`
`The Anticipation Grounds Based On Boer Are Vertically Redundant
`Relative to Obviousness Grounds In View of Boer ..................................... 32
`
`VII. CONCLUSION............................................................................................. 33
`
`-ii-
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`IPR2014-00519
`U.S. Patent No. 8,023,580
`
`TABLE OF AUTHORITIES
`
`CASES
`3M Innovative Props. Co. v. Avery Dennison Corp., 350 F.3d 1365 (Fed.
`Cir. 2003) ..............................................................................................................8
`
`Page(s)
`
`Connell v. Sears Roebuck & Co., 722 F. 2d 1542 (Fed. Cir. 1983) .................. 26-27
`
`Constant v. Adv. Micro-Devices, Inc., 48 F.2d 1560 (Fed. Cir. 1988)........11, 12, 13
`
`Ex Parte Mindrum, Appeal 2010-010342, 2013 WL 1332716 (Patent Tr. &
`App. Bd. Feb. 27, 2013)......................................................................................10
`
`Grain Processing Corp. v. American-Maize Prods. Co., 840 F.2d 902 (Fed.
`Cir. 1988) ............................................................................................................23
`
`Innogenetics, N.V. v. Abbott Labs, 512 F.3d 1363 (Fed. Cir. 2008) .......................23
`
`In re Buszard, 504 F.3d 1364 (Fed. Cir. 2007)..........................................................3
`
`In re Cortright, 165 F.3d 1353 (Fed. Cir. 1999)........................................................3
`
`In re Fout, 675 F.2d 297 (C.C.P.A. 1982)...............................................................12
`
`In re Linnert, 309 F.2d 498 (C.C.P.A. 1962)...........................................................13
`
`In re Nomiya, 509 F.2d 566 (C.C.P.A. 1975)..............................................10, 12, 15
`
`In re NTP, Inc., 654 F.3d 1279 (Fed. Cir. 2011) .....................................................23
`
`In re Suitco Surface, Inc., 603 F.3d 1255 (Fed. Cir. 2010) .......................................3
`
`InTouch Tech., Inc. v. VGO Comm’s, Inc., 2014 U.S. App. LEXIS 8745
`(Fed. Cir. May 9, 2014) ......................................................................................24
`
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342 (Fed. Cir.
`2012) ...................................................................................................................23
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) ....................................23, 24, 28
`
`Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co., CBM2012-00003,
`Paper 7 ................................................................................................................32
`
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`IPR2014-00519
`U.S. Patent No. 8,023,580
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`Page(s)
`Net MoneyIn, Inc. v. Verisign, Inc., 545 F.3d 1359 (Fed. Cir. 2008)................26, 30
`
`Pharmastem Therapeutics, Inc. v. Viacell, Inc., 491 F.3d 1342 (Fed. Cir.
`2007) .............................................................................................................11, 12
`
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) ...........................................9
`
`Reading & Bates Construction Co. v. Baker Energy Resources Corp., 748
`F.2d 645 (Fed. Cir. 1984) .............................................................................10, 11
`
`Riverwood Int’l Corp. v. R.A. Jones & Co., 324 F.3d 1346 (Fed. Cir. 2003)9, 10, 12
`
`Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628 (Fed. Cir. 1987) .................26
`
`Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996)......................6
`
`Wowza Media Systems, LLC et al. v. Adobe Systems Inc., IPR2013-00054,
`Paper 12 ..............................................................................................................23
`
`STATUTES
`35 U.S.C. § 102 ........................................................................................................27
`
`35 U.S.C. § 313 ..........................................................................................................1
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.100(b) ................................................................................................3
`
`37 C.F.R. § 42.107 .....................................................................................................1
`
`77 Fed. Reg. 48,756 (Aug. 14, 2012).........................................................................3
`
`Manual of Patent Examining Procedure (MPEP) § 2111..........................................3
`
`Manual of Patent Examining Procedure (MPEP) § 2141..........................................4
`
`Manual of Patent Examining Procedure (MPEP) § 2129........................................10
`
`-iv-
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`

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`IPR2014-00519
`U.S. Patent No. 8,023,580
`
`Exhibit No.
`
`2301
`
`TABLE OF EXHIBITS
`
`Exhibit Description
`
`U.S. Provisional Patent Application No. 60/067,562, dated
`December 5, 1997.
`
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`IPR2014-00519
`U.S. Patent No. 8,023,580
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`PATENT OWNER PRELIMINARY RESPONSE
`UNDER 37 C.F.R. § 42.107
`
`Patent Owner Rembrandt Wireless Technologies, LP (“Rembrandt” or
`
`“Patent Owner”) hereby submits this Preliminary Response to the Petition filed by
`
`Samsung Electronics Co. Ltd., Samsung Electronics America, Inc., Samsung
`
`Telecommunications America, LLC, and Samsung Austin Semiconductor, LLC
`
`(collectively, “Petitioner”) seeking inter partes review of U.S. Patent No.
`
`8,023,580 (“the ’580 Patent”). This filing is timely under 35 U.S.C. § 313 and 37
`
`C.F.R. § 42.107, as it is being filed within three months of the mailing date of the
`
`Notice of Filing Date Accorded to Petition (Paper 3), mailed April 3, 2014.
`
`I.
`
`INTRODUCTION
`
`The Patent Owner provides the present Patent Owner’s Preliminary
`
`Response to assist the Patent Trial and Appeal Board (“the Board”) in its
`
`assessment of the grounds raised by the Petitioner in challenging certain claims of
`
`the ‘580 Patent. The Patent Owner requests that the Board deny inter partes
`
`review as to all grounds set forth in the Petition. Should a trial be instituted, the
`
`Patent Owner reserves the right to submit additional arguments and evidence,
`
`including expert declaration, which the rules governing this proceeding do not
`
`allow the Patent Owner to provide at this stage.
`
`

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`IPR2014-00519
`U.S. Patent No. 8,023,580
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`II. OVERVIEW OF THE ’580 PATENT
`
`Petitioner challenges Claims 23, 25, 29, 30, 32, 34, 38, 40, 41, 43, 44, and
`
`47 of the ’580 Patent, of which Claims 23, 32, and 40 are independent.
`
`The ‘580 patent to inventor Gordon Bremer claims priority to a provisional
`
`application filed on December 5, 1997. (Ex. 2301.) The ‘580 patent discloses a
`
`system in which network devices may communicate with other network devices
`
`according to a master/slave relationship using different types of modulation
`
`methods. (Ex. 1301, Abstract).
`
`The use of multiple types of modulation methods in a master-slave system as
`
`taught by the ‘580 Patent can, for example, permit selection of the modulation type
`
`best suited for a particular application. (Ex. 1301, 1:66-2:33.) Annotated Figure 4
`
`shows an embodiment of the patented technology where some devices in the
`
`network communicate using one type of modulation method (e.g., amplitude
`
`modulation), while other devices communicate using a different type of
`
`modulation method (e.g., frequency modulation):
`
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`IPR2014-00519
`U.S. Patent No. 8,023,580
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`III. CLAIM CONSTRUCTION AND ORDINARY SKILL IN THE ART
`In an inter partes review, claim terms in an unexpired patent are interpreted
`
`according to their broadest reasonable construction. 37 C.F.R. § 42.100(b); Office
`
`Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). “The
`
`broadest reasonable interpretation of the claims must also be consistent with the
`
`interpretation that those skilled in the art would reach. In re Cortright, 165 F.3d
`
`1353, 1359, 49 USPQ2d 1464, 1468 (Fed. Cir. 1999). . . . [T]he focus of the
`
`inquiry regarding the meaning of a claim should be what would be reasonable from
`
`the perspective of one of ordinary skill in the art. In re Suitco Surface, Inc., 603
`
`F.3d 1255, 1260 (Fed. Cir. 2010); In re Buszard, 504 F.3d 1364 (Fed. Cir. 2007).”
`
`Manual of Patent Examining Procedure (MPEP) § 2111.
`
`Should a trial be instituted, Patent Owner reserves the right to provide
`
`alternative constructions for the terms for which Patent Owner proposes
`
`constructions below.
`
`A.
`
`A Person Having Ordinary Skill In The Art
`
`Petitioner alleges, in a conclusory fashion, that a hypothetical person of
`
`ordinary skill 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.” (Paper 4 at 9.) Petitioner provides no rationale for its
`
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`IPR2014-00519
`U.S. Patent No. 8,023,580
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`definition, including why a Master’s degree in electrical engineering is necessary
`
`or why “at least five years of experience” is needed to qualify as one of ordinary
`
`skill in the art. Petitioner’s proposed definition is arbitrary and should be rejected.
`
`Petitioner’s definition also should be rejected because its use of the open-
`
`ended term “at least” would include persons who are far over-qualified to be
`
`considered of “ordinary skill” in the art. Surely, someone with the proposed
`
`Master’s degree and more than 15 years of practical experience, for example, is
`
`not “a person of ordinary skill in the art” because that person would possess a
`
`much higher level of understanding of the technology disclosed in the ‘580 patent
`
`than a similar person with five years of experience, yet such a person would meet
`
`Petitioner’s definition.
`
`Should a trial be instituted, Patent Owner reserves the right to present an
`
`alternative definition for a person of ordinary skill in the art, along with additional
`
`evidence as to the various factors to be taken into account in determining the level
`
`of ordinary skill such as the type of problems encountered in the art at the time of
`
`the invention, the sophistication of the technology, and the education level and
`
`professional capabilities of active workers in the field. MPEP §2141(II)(C).
`
`B.
`
`Claim Construction
`
`The Petitioner has proposed construction of the following terms:
`
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`IPR2014-00519
`U.S. Patent No. 8,023,580
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`(a) “first modulation method” (Claims 23, 32, 40, and 41) and
`
`“second modulation method” (Claims 23, 32, and 40);
`
`Although the construction of the terms “first modulation method” and
`
`“second modulation method” is not relevant to the arguments presented in
`
`Patent Owner’s Preliminary Response, Patent Owner, nonetheless, proposes
`
`the following constructions for these terms for completeness and to point out
`
`areas of disagreement with the constructions proposed by the Petitioner.
`
`1.
`
`“First Modulation Method” and “Second Modulation Method”
`
`Claim Term Patentee’s Construction
`first
`“a first method for varying one
`modulation
`or more characteristics of a
`method
`carrier in accordance with
`information to be
`communicated.”
`“a second method for varying
`one or more characteristics of a
`carrier in accordance with
`information to be
`communicated.”
`
`second
`modulation
`method
`
`Petitioner’s Construction
`“a process of varying
`characteristic(s) of a carrier
`wave that is different from a
`second modulation method.”
`
`“a process of varying
`characteristic(s) of a carrier
`wave that is different from a
`first modulation method.”
`
`With respect to the term “modulation,” Petitioner does not rely on the ‘580
`
`specification but, instead, relies on an IEEE dictionary to contend that the term
`
`means “[t]he process by which some characteristic of a carrier is varied in
`
`accordance with a modulating wave.” (Paper 4 at 11.) But Petitioner makes no
`
`attempt to examine the use of the term “modulate” in the specification of the ‘580
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`IPR2014-00519
`U.S. Patent No. 8,023,580
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`or to compare their suggested definition to the ‘580 specification. The
`
`specification, however, “is always highly relevant to the claim construction
`
`analysis. Usually, it is dispositive; it is the single best guide to the meaning of a
`
`disputed term.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.
`
`Cir. 1996).
`
`A person of ordinary skill would understand that a “modulation method” is
`
`a technique for varying the characteristics of a carrier, such as its amplitude,
`
`frequency and/or phase. A person of ordinary skill also would understand that the
`
`characteristics are not varied randomly or indiscriminately, as Petitioner implicitly
`
`proposes, but instead are varied in a predetermined manner to convey information,
`
`so that meaningful communication can occur. Indeed, the ‘580 patent illustrates
`
`this in Figures 5, 6, and 7 and at 5:57-7:3.
`
`To illustrate, the figure below shows one type of modulation, called
`
`“amplitude modulation,” in which the amplitude characteristic of the carrier (i.e.,
`
`its height) is varied in accordance with other information to produce a “modulated
`
`carrier”:
`
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`IPR2014-00519
`U.S. Patent No. 8,023,580
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`Thus, for example, when the information to be communicated is a 0 bit, the carrier
`
`is “modulated” by decreasing its height/amplitude. Conversely, when the
`
`information to be communicated is a 1 bit, the carrier is “modulated” by increasing
`
`its height/amplitude.
`
`The specification of the ‘580 patent uses the term “modulation method”
`
`consistent with this plain and ordinary meaning when, for example, it refers to
`
`modulation methods “such as quadrature amplitude modulation (QAM), carrier
`
`amplitude
`
`and phase
`
`(CAP) modulation, or discrete multitone
`
`(DMT)
`
`modulation.” (Ex. 1201, 2:1-8; see also id., 5:17-22.) As described in the
`
`specification (Figures 5, 6, and 7 at 5:57-7:3), the different modulation methods
`
`are used to transmit information to be communicated. Because none of the
`
`intrinsic evidence departs from the plain and ordinary meaning, the Board should
`
`construe the term “first modulation method” as “a first method for varying one or
`
`-7-
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`IPR2014-00519
`U.S. Patent No. 8,023,580
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`more characteristics of a carrier in accordance with information to be
`
`communicated” and the term “second modulation method” as “a second method
`
`for varying one or more characteristics of a carrier in accordance with information
`
`to be communicated.” Patent Owner’s constructions are consistent with the
`
`understanding of those of ordinary skill, find support in the intrinsic evidence,
`
`and follow a well-defined patent claiming convention.
`
`There does not appear to be any dispute that the claims of the ‘580 patent
`
`adhere to the well-established patent drafting convention where “first” and
`
`“second” merely identify repeated instances of a similarly named claim element.
`
`3M Innovative Props. Co. v. Avery Dennison Corp., 350 F.3d 1365, 1371 (Fed.
`
`Cir. 2003) (noting that “[t]he use of the terms ‘first’ and ‘second’ is a common
`
`patent-law convention to distinguish between repeated instances of an element or
`
`limitation.”). For example, claim 58 of the ‘580 patent uses “first” and “second”
`
`to identify a particular “modulation method,” as well as a particular “sequence.”
`
`(Ex. 1201, 11:51-12:10.) Without the “first” and “second” identifiers, the claim
`
`would be confusing.
`
`Other claims of the ‘580 patent likewise use the “first” and “second”
`
`convention to identify objects with similar names: “first” and “second” data (‘580
`
`Claims 23, 25, 32, 34); “first” and “second” information (‘580 Claims 1, 49, 54;
`
`“first” and “second” sequences (‘580 Claims 1, 5, 40, 44, 49, 54, 58, 62); “first”
`
`-8-
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`IPR2014-00519
`U.S. Patent No. 8,023,580
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`and “second” logic (‘580 Claims 49, 54); “first” and “second” types of receivers
`
`(‘580 Claims 70, 71, 72). Thus, the claims do not import any special meaning to
`
`“first” and “second” modulation methods. Phillips v. AWH Corp., 415 F.3d
`
`1303, 1313 (Fed. Cir. 2005) (“[T]he words of a claim ‘are generally given
`
`their ordinary and customary meaning.’”).
`
`IV. PETITIONER’S ALLEGED “ADMITTED PRIOR ART” CANNOT
`SERVE AS BASIS FOR INSTITUTING TRIAL
`
`The portions of the ‘580 Patent cited in the Petition do not qualify as
`
`Admitted Prior Art. Petitioner’s argument that portions of the ‘580 specification
`
`are admitted prior art fails as a matter of law. Petitioner has failed to make any
`
`showing that the alleged admitted prior art is a work of another, which is a
`
`prerequisite to finding prior art by admission. Simply put, since Petitioner has not
`
`met (and, as explained below, cannot meet) its burden of showing that the alleged
`
`admitted prior art is the work of another, and Petitioner has presented no statutory
`
`basis rendering the cited portions of the specification prior art, the Board should
`
`reject Petitioner’s reliance on the alleged admitted prior art.
`
`1.
`
`The Doctrine Of Admitted Prior Art Is Not Applicable To
`An Inventor’s Own Work
`
`The law is clear and well-settled that the doctrine of prior art by admission
`
`“is inapplicable when the subject matter at issue is the inventor’s own work.”
`
`Riverwood Int’l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1354 (Fed. Cir. 2003).
`
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`IPR2014-00519
`U.S. Patent No. 8,023,580
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`As the Federal Circuit has explained, “[o]ne’s own work may not be considered
`
`prior art in the absence of a statutory basis, and a patentee should not be
`
`‘punished’ for being as inclusive as possible and referencing his own work… .”
`
`Riverwood Int’l Corp., 324 F.3d at 1355 (emphasis added) (citing In re Nomiya,
`
`509 F.2d 566, 571 n.5 (C.C.P.A. 1975)); see also Reading & Bates Construction
`
`Co. v. Baker Energy Resources Corp., 748 F.2d 645 (Fed. Cir. 1984) (holding that
`
`patentee’s discussion in the “Summary of the Prior Art” did not constitute an
`
`admission that one’s own prior work is prior art); see also Ex Parte Mindrum,
`
`Appeal 2010-010342, 2013 WL 1332716 (Patent Tr. & App. Bd. Feb. 27, 2013)
`
`(“Riverwood, cited by Appellant in both his principle and reply briefs, stands for
`
`the proposition that the doctrine of prior art by admission is “inapplicable when the
`
`subject matter at issue is the inventor’s own work.”); see also MPEP § 2129
`
`(instructing “the examiner must determine whether the subject matter identified as
`
`‘prior art’ is applicant’s own work or the work of another.”)
`
`The Riverwood Int’l court examined a line of precedent from the Federal
`
`Circuit and its predecessor court and provided the “policy behind requiring a
`
`statutory basis before one’s own work may be considered as prior art.” Riverwood
`
`Int’l Corp., 324 F.3d at 1355 (quoting Reading & Bates Construction Co., 748
`
`F.2d at 650). As the Reading & Bates Construction court explained:
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`IPR2014-00519
`U.S. Patent No. 8,023,580
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`There is an important distinction between the situation where
`the inventor improves upon his own invention and the situation
`where he improves upon the invention of another. In the
`former situation, where the inventor continues to improve upon
`his own work product, his foundational work product should
`not, without a statutory basis, be treated as prior art solely
`because he admits knowledge of his own work. It is common
`sense that an inventor, regardless of an admission, has
`knowledge of his own work.
`
`Reading & Bates Construction Co., 748 F.2d at 650 (emphasis added).
`
`Here, Petitioner has utterly failed to meet its burden with respect to the
`
`alleged admitted prior art. Petitioner has made no showing that the alleged
`
`admitted prior art is the work of another, nor has it demonstrated any statutory
`
`basis for treating the cited portions of the specification as prior art. Petitioner’s
`
`reliance on Figures 1 and 2, and cols. 2:24-29, 3:40-44, and 4:4-9 of the ‘580
`
`patent as admitted prior art should be rejected.
`
`2.
`
`The Decisions Regarding Admitted Prior Art Cited By
`Petitioner Are Inapposite
`Petitioner’s reliance on Pharmastem and Constant is unavailing because
`
`those cases dealt with admitted prior art references of another. (See Paper 4 at 7-
`
`8.) In Pharmastem, the inventors specifically acknowledged in the specification
`
`that the presence of stem cells in cord blood was previously shown in prior art
`
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`IPR2014-00519
`U.S. Patent No. 8,023,580
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`references by others. See Pharmastem Therapeutics, Inc. v. Viacell, Inc., 491 F.3d
`
`1342, 1361-62 (Fed. Cir. 2007). Similarly, in Constant, the inventor provided
`
`specific testimony admitting that he read a prior art article by another that pre-
`
`dated his invention, and that it led him to conceive the invention at issue in that
`
`case. Constant v. Adv. Micro-Devices, Inc., 848 F.2d 1560, 1570 (Fed. Cir. 1988).
`
`Those facts do not exist here. The Petitioner did not assert that the alleged cited
`
`prior art portions of the ‘580 Patent identify or describe the work of another.
`
`Furthermore, the Riverwood Int’l court specifically distinguished the type of
`
`cases on which Pharmastem and Constant’s holdings are based from the situation
`
`at issue in the present case:
`
`While Nomiya and Fout stand for the proposition that a
`reference can become prior art by admission, that
`doctrine is inapplicable when the subject matter at issue
`is the inventor’s own work.
`
`See Riverwood Int’l Corp., 324 F.3d at 1354 (discussing In re Nomiya, 509 F.2d at
`
`570-71 and In re Fout, 675 F.2d 297, 301 (C.C.P.A. 1982) (an applicant’s
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`admission of actual knowledge of the prior invention of another, which was
`
`described in the preamble of a Jepson claim, was held to constitute an admission
`
`that the described invention was prior art to the applicant)). The quoted language
`
`from Constant on which Petitioner relies in Paper 4 (pages 7-8) cites to In re
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`U.S. Patent No. 8,023,580
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`Nomiya, 509 F.2d at 571 n.5; the quoted language from Pharmastem, in turn, cites
`
`to Constant v. Adv. Micro-Devices, Inc., 848 F.2d 1560, 1570 (Fed. Cir. 1988).
`
`3.
`
`The Inventor’s Own Identification of the Problem to be
`Solved is Inseparable From the Invention as a Whole and
`Cannot Be Considered Admitted Prior Art
`
`A fair reading of the specification along with the portions alleged by the
`
`Petitioner as admitted prior art demonstrate that the inventor of the ‘580 patent was
`
`identifying a problem and offering a solution. In In re Linnert, the Court held that
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`patentee’s own analysis of the problem which led him/her to the solution was an
`
`inseparable part of the invention as a whole, which made it unobvious over the
`
`prior art. 309 F.2d 498 (C.C.P.A. 1962). The court stated:
`
`Much of what we have quoted above is, in fact,
`appellant’s own analysis of the causes of the failure
`which led him to the means for its solution. In cases of
`this kind it must not be lost sight of, as pointed out by the
`Supreme Court in Eibel Process Co. v. Minnesota &
`Ontario Paper Co., 261 US 45, 67, that the inventive act
`which entitles an applicant to a patent resides as well in
`the discovery of the source of trouble as in the
`application of the remedy.
`
`Id. at 502. Similarly, in the present case, the ‘580 inventor’s recognition of the
`
`problem is an inseparable part of the invention as a whole.
`
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`IPR2014-00519
`U.S. Patent No. 8,023,580
`
`With reference to Figures 1 and 2 of the ‘580 patent, the inventor postulated
`
`a system in which tribs that were capable of communicating using different
`
`modulation methods were employed in a multipoint master/slave arrangement, and
`
`he then went on to identify the problems that he foresaw with such a system. For
`
`example, in the description of Figure 1, the inventor stated that “before any
`
`communication can begin in multipoint system 22, the master transceiver and tribs
`
`26-26 must agree on a common modulation method. If a common modulation
`
`method is found, the master transceiver 24 and a single trib 26 will then exchange
`
`sequences of signals...” (Ex. 1201, 3:46-51 (emphasis added).) The inventor, thus,
`
`pointed out that so long as a common modulation method is present, the
`
`communication is successful. If, however, no common modulation method is
`
`established, then the master and the trib will not be able to communicate.
`
`In the description of Figure 2, and again by way of his postulated system, the
`
`inventor illustrated an exemplary multipoint communication session using a
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`common modulation method (Ex. 1201, 4:4-50.) The inventor then went on to
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`describe the problem that the ‘580 patent intends to solve where more than one
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`modulation method is employed between the master and the various tribs:
`
`“Consider the circumstance in which master transceiver 24 and trib 26b share a
`
`common modulation type A while trib 26a uses a second modulation type B. When
`
`master transceiver attempts to establish A as a common modulation during
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`U.S. Patent No. 8,023,580
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`sequence 32, trib 26a will not be able to understand that communication.” (Ex.
`
`1201, 4:55-60 (emphasis added); see also Ex. 1201, 4:55-5:6 (setting forth the
`
`Patent Owner’s description of the problem that the ’580 Patent is intended to
`
`solve).)
`
`As the Nomiya court pointed out, “a patentable invention may lie in the
`
`discovery of the source of a problem even though the remedy may be obvious once
`
`the source of the problem is identified.” In re Nomiya, 509 F.2d 566, 571
`
`(C.C.P.A. 1975)). Accordingly, and consistent with the Federal Circuit precedent,
`
`the fact that the inventor of the ‘580 postulated a system that allowed him to
`
`identify the problem to be solved should not negate patentability. Moreover,
`
`Petitioner fails to even contend that this subject matter is the work of another, as
`
`required for there to be admitted prior art.
`
`V.
`
`THERE IS NO REASONABLE LIKELIHOOD THAT CLAIMS 23, 25,
`30, 41, 44, 29, 38 OR 47 ARE ANTICIPATED BY BOER OR
`RENDERED OBVIOUS IN VIEW OF BOER, ALONE OR IN VIEW
`OF COMBINATION OF ALLEGED APA AND BOER
`
`Petitioner has not shown a reasonable likelihood that any of the challenged
`
`Claims 23, 25, 30, 41, and 44 is anticipated by Boer or rendered obvious in view of
`
`Boer. Further, Petitioner has not shown a reasonable likelihood that any of the
`
`challenged Claims 29, 38, and 47 is rendered obvious in view of combination of
`
`alleged APA and Boer.
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`

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`IPR2014-00519
`U.S. Patent No. 8,023,580
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`A.
`
`Summary of Boer
`
`Boer is directed to a wireless LAN (local area network ) that “includes first
`
`stations adapted to operate at a 1 or a 2 Mbps [Megabit per second] data rate and
`
`second stations adapted to operate at a 1, 2, 5, or 8 Mbps data rate.” (Ex. 1204,
`
`Abstract.) “The 1 and 2 Mbps rates use DBPSK and DQPSK modulation,
`
`respectively.” (Id.) “The 5 and 8 Mbps rates use PPM/DQPSK modulation.” (Id.)
`
`Significantly, all of Boer’s rates operate using phase shift keying (PSK)
`
`modulation.
`
`Figure 1 of Boer, which is reproduced below, depicts a wireless LAN 10 that
`
`includes an access point 12, which serves as a base station, and includes antennas
`
`16 and 17 for transmitting and receiving messages over a wireless communication
`
`channel. (Id. at 2:5-15.) The LAN 10 further includes mobile stations 18 (18-1
`
`and 18-2), which are “capable of transmitting and receiving messages selectively at
`
`a data rate of 1 Mbps (Megabit per second) or 2 Mbps ….” (Id. at 2:19-21.)
`
`“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.” (Id. at 2: 23-27) (emphasis added). The LAN 10 further
`
`includes mobile stations 22 (22-1 and 22-2) that can operate at a 1 Mbps or a 2
`
`Mbps data rate using the same modulation as stations 18, and in addition can also
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`IPR2014-00519
`U.S. Patent No. 8,023,580
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`“operate at two higher data rates, namely 5 Mbps and 8 Mbps.” (Id. at 2:34-41.)
`
`“These 5 and 8 Mbps data rates utilize PPM/DQPSK (pulse position modulation –
`
`differential quadrature phase shift keying)…” (Id. at 2:41-43) (emphasis added).
`
`Figure 4 of Boer, which is reproduced below, shows the format of a typical
`
`message 200 used in the LAN 10. (Id. at 3:42-43.) “The message 200 includes a
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`128-bit SYNC (synchronization) field 202, a 16-bit SFD (start of frame delimiter)
`
`field 204, an 8-bit SIGNAL field 206 (to be explained), and 8-bit SERVICE field
`
`208 (to be explained), a 16-bit LENGTH field 210 (to be explained), a 16-bit CRC
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`-17-
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`IPR2014-00519
`U.S. Patent No. 8,023,580
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`check field 212, which provides a CRC check for the portions 206, 208, and 210,
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`and finally a DATA field 214 which comprises a variable number of data “octets”
`
`that is 8-bit segments, sometimes referred to as “bytes.” (Id. at 3:42-55.)
`
`Boer explains that “the preamble 216 and header 218 are always transmitte