`Trials@uspto.gov
`571-272-7822
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`Date Entered: September 17, 2015
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO. LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC.,
`SAMSUNG TELECOMMUNICATIONSAMERICA, LLC, and
`SAMSUNG AUSTIN SEMICONDUCTOR, LLC,
`Petitioner,
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`v.
`
`REMBRANDT WIRELESS TECHNOLOGIES, LP,
`Patent Owner.
`____________
`
`Case IPR2014-00519
`Patent 8,023,580 B2
`____________
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`
`
`Before JAMESON LEE, HOWARD B. BLANKENSHIP, and
`JUSTIN BUSCH, Administrative Patent Judges.
`
`
`BUSCH, Administrative Patent Judge.
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`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`IPR2014-00519
`Patent 8,023,580 B2
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`I. BACKGROUND
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`Samsung Electronics Co. Ltd., Samsung Electronics America, Inc.,
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`Samsung Telecommunications America, LLC, and Samsung Austin
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`Semiconductor, LLC (collectively, “Petitioner”) filed a request for inter
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`partes review of claims 23, 25, 29, 30, 32, 34, 38, 40, 41, 43, 44, and 47 of
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`U.S. Patent No. 8,023,580 B2 (“the ’580 patent,” Ex. 1301) under 35 U.S.C.
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`§§ 311–319. The Board instituted an inter partes review of claims 32, 34,
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`38, 40, 43, 44, and 47. Paper 16 (“Dec. on Inst.”).
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`Subsequent to institution, Patent Owner Rembrandt Wireless
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`Technologies, LP, filed a Notice of Filing a Disclaimer (Paper 26),
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`indicating that Patent Owner filed a disclaimer under 35 U.S.C. § 1.321(a)
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`disclaiming claims 32, 34, 40, 43, and 44. Therefore, the trial is terminated
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`with respect to claims 32, 34, 40, 43, and 44. See 37 C.F.R. §§ 42.72, 42.73.
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`Patent Owner also filed a patent owner response (Paper 25, “PO Resp.”).
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`Petitioner filed a reply to the Patent Owner Response (Paper 34, “Pet.
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`Reply”).
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`Oral hearing was held on April 24, 2015.1
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`The Board has jurisdiction under 35 U.S.C. § 6(c). This final written
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`decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
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`For the reasons that follow, we determine that Petitioner has shown by
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`a preponderance of the evidence that claims 38 and 47 of the ’580 patent are
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`unpatentable.
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`1 The record includes a transcript of the oral hearing. Paper 48.
`2
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`IPR2014-00519
`Patent 8,023,580 B2
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`A. Related Proceedings
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`According to Petitioner, the ’580 patent is involved in the following
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`district court proceeding: Rembrandt Wireless Technologies, LP v. Samsung
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`Electronics Co., No. 2:13-cv-00213 (E.D. Tex. 2013). Pet. 2. The ’580
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`patent also has been challenged in the following cases: Samsung Electronics
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`Co. v. Rembrandt Wireless Technologies, LP , IPR2014-00514 (not
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`instituted); Samsung Electronics Co. v. Rembrandt Wireless Technologies,
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`LP, IPR2014-00515 (not instituted); and Samsung Electronics Co. v.
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`Rembrandt Wireless Technologies, LP, IPR2014-00518 (final decision
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`issuing concurrently).
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`B. The ’580 Patent
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`The ’580 patent issued from an application filed August 19, 2009,
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`which claimed priority under 35 U.S.C. § 120 through a chain of intervening
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`applications to an application filed December 4, 1998, and which further
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`claimed priority under 35 U.S.C. § 119 to a provisional application filed
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`December 5, 1997.
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`The technical field of the patent relates to data communications and
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`modulators/demodulators (modems) and in particular to a data
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`communications system in which a plurality of modems uses different types
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`of modulation in a network. Ex. 1301, 1:19–23, 1:56–2:20.
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`IPR2014-00519
`Patent 8,023,580 B2
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`C. Illustrative Claim
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`Illustrative claim 38 and claim 32, from which claim 38
`depends, are reproduced below:
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`32. A communications device, comprising:
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` a
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` processor; and
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` a
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` memory having stored therein executable instructions
`for execution by the processor, wherein the executable
`instructions direct transmission of a first data with a first
`modulation method followed by a second data with a second
`modulation method, wherein the first modulation method is
`different than the second modulation method, wherein the first
`data comprises an indication of an impending change from the
`first modulation method to the second modulation method
`wherein the executable instructions direct transmission of a
`third data with the first modulation method after the second
`data, and wherein transmission of the second data is according
`to a particular quantity of data.
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`38. The device of claim 32, wherein the memory has
`stored therein program code for a multipoint communications
`protocol.
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`D. Prior Art
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`Boer
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`US 5,706,428
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`Jan. 6, 1998
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`(Ex. 1304)
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`E. Asserted Ground of Unpatentability
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`The Board instituted inter partes review on the asserted grounds that
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`claims 32, 34, 40, 43, and 44 of the ’580 patent are unpatentable as
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`anticipated by Boer and claims 38 and 47 are unpatentable as obvious over
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`Admitted Prior Art (“APA”) and Boer. Dec. on Inst. 16. Patent Owner’s
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`Patent 8,023,580 B2
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`disclaimer, discussed above, leaves the anticipation ground as the only
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`ground at issue in this proceeding.
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`A. Prior Art
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`II. ANALYSIS
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`
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`1. Admitted Prior Art
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`Petitioner contends that the ’580 patent’s disclosed multipoint
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`communication systems (or master/slave systems), depicted in Figures 1 and
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`2 and described in column 3, line 40 through column 4, line 50, constitutes
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`material that may be used as prior art against the patent under 35 U.S.C.
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`§ 103(a). We agree. Figure 1 of the patent is labeled as “Prior Art.” Pet. 6;
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`Ex. 1301, Fig. 1. Further, the ’580 patent’s specification refers to “prior art”
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`multipoint communication system 22 comprising master modem or
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`transceiver 24, which communicates with a plurality of tributary modems
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`(“tribs”) or transceivers 26. Pet. 6; Ex. 1301, 3:40–44. Further, the ’580
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`patent describes Figure 2 as illustrating the operation of the multipoint
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`communication system of (prior art) Figure 1. Pet. 7; Ex. 1301, 3:9–10.
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`2. Boer
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`Boer describes a wireless LAN that includes first stations that operate
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`at 1 or 2 Mbps (Megabits per second) data rate and second stations that
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`operate at 1, 2, 5, or 8 Mbps data rate. Ex. 1304, Abstract.
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`Figure 1 of Boer is reproduced below.
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`Figure 1 is said to be a block diagram of a wireless LAN embodying
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`Boer’s invention. Ex. 1304, 1:53–54. LAN 10 includes access point 12,
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`serving as a base station. The network includes mobile stations 18-1 and 18-
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`2 that are capable of transmitting and receiving messages at a data rate of 1
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`or 2 Mbps using DSSS (direct sequence spread spectrum) coding. When
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`operating at 1 Mbps, a station uses DBPSK (differential binary phase shift
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`keying) modulation. When operating at 2 Mbps, a station uses DQPSK
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`(differential quadrature phase shift keying) modulation. Id. at 2:6–27.
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`Mobile stations 22-1 and 22-2 are capable of operating at the 1 and 2 Mbps
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`data rates using the same modulation and coding as stations 181 and 182. In
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`addition, stations 22-1 and 22-2 can operate at 5 and 8 Mbps data rates using
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`PPM/DQPSK (pulse position modulation–differential quadrature phase shift
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`keying) in combination with the DSSS coding. Id. at 2:34–44.
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`B. Claims 38 and 47 – APA and Boer
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`1. Asserted Ground
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`Petitioner applies the teachings of the APA and Boer to demonstrate
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`obviousness of the subject matter of illustrative claim 29 (which recites the
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`similar limitation present in claims 38 and 47 of a multipoint
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`communications protocol), relying on APA for teaching of master/slave
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`communication systems. Pet. 37–43. Petitioner submits that a person
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`having ordinary skill in the art would have been motivated to combine Boer
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`with APA, referring to the Declaration of Dr. David Goodman (Ex. 1318
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`¶¶ 162–170). Id. at 38–41. Petitioner maps the disclosures of Boer to claim
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`32 (id. at 25–26) from which claim 38 depends and claims 40 (id. at 31–35)
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`and 44 (id. at 37), from which claim 47 depends.
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`Dr. Goodman testifies that polled multiport master/slave
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`communications systems were well known to those of ordinary skill in the
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`art for simplicity and determinacy, referring to Exhibit 1317. Ex. 1318
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`¶ 169. Petitioner submits Exhibit 1317 (“Upender”) as a November 1994
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`publication that compares various strengths and weaknesses for
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`communication protocols for embedded systems. Ex. 1317, 7. The
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`document states that polling is one of the more popular protocols for
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`embedded systems “because of its simplicity and determinacy.” Id. In that
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`protocol, a centrally assigned master periodically sends a polling message to
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`the slave nodes, giving them explicit permission to transmit on the network.
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`Id. The protocol “is ideal for a centralized data-acquisition system where
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`peer-to-peer communication and global prioritization are not required.” Id.
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`2. Motivation to Combine
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`Patent Owner argues, in its Response, that Upender does not reflect a
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`proper motivation from the prior art for the proffered combination of Boer
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`and APA. Patent Owner submits a Declaration from a co-author of Upender
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`to show that the article did not suggest the use of a master/slave
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`communication system. Ex. 2302 (Declaration of Dr. Philip Koopman).
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`We have considered Patent Owner’s arguments and evidence but find
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`that the clear teachings in Upender are not diminished or rebutted. Upender
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`investigates tradeoffs in different communication protocols. The article
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`concludes that CSMA/CA (carrier sense multiple access with collision
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`avoidance), or RCSMA (reservation CSMA), is a good choice for some
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`embedded systems. Ex. 1317, 10–11. The article also indicates that polling
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`may not provide sufficient flexibility for “advanced systems,” classifying
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`polling as “simple,” but noting that the discussion of the different protocol
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`strengths and weaknesses “should allow you to select the best protocol to
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`match your needs.” Id. at 10–11. In fact, Dr. Koopman admits that there are
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`some systems for which master/slave is a better match for the design
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`requirements. Pet. Reply 9; Ex. 1319, 39:2–20.
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`That Upender may identify some advantages of CSMA/CA over a
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`master/slave protocol is not a “teaching away” from the master/slave
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`protocol. Upender teaches that master/slave protocols were widely used and
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`a good choice for simple systems. See In re Gurley, 27 F.3d 551, 553 (Fed.
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`
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`Cir. 1994) (“[A] person seeking to improve the art of flexible circuit boards,
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`on learning from [a reference] that epoxy was inferior to polyester-imide
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`resins, might well be led to search beyond epoxy for improved products.
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`However, [the reference] also teaches that epoxy is usable and has been used
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`for Gurley’s purpose.”).
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`Patent Owner’s position appears to be that the prior art teaches that
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`one and only one communication protocol should ever be used, which is
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`directly contrary to the clear teachings of Upender. In view of Upender, one
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`of ordinary skill in the art would have found it obvious to use a different
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`prior art communication protocol (e.g., a simpler protocol) when using
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`multiple data rates as described by Boer.
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`Further, we agree with Petitioner that Boer does not describe CSMA
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`as central to an alleged goal of seeking a “reduction of overhead-in-time per
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`transmission,” but relates that reduction to the use of short acknowledgment
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`(ACK) messages. PO Resp. 40; Pet. Reply 8; Ex. 1304, 8:16–29.
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`Patent Owner submits that Dr. Goodman’s Declaration (Ex. 1318) is
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`unreliable because it is unclear what level of skill it attributes to the ordinary
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`artisan. PO Resp. 29–30. The alleged lack of clarity, however, does not
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`affect the outcome. We note that specifying the level of ordinary skill in
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`terms of an academic degree in a field of study and the number of years of
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`practical working experience is generally unhelpful, as a practical matter,
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`because it does not convey whether one with ordinary skill in the art would
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`have been aware of anything specific or particular. Patent Owner has not
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`directed us to evidence establishing what someone who has earned a certain
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`degree or who has a certain number of years of experience necessarily
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`knows. It is not always necessary, however, to have an express proposition
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`on the level of ordinary skill in the art. The level of ordinary skill in the art
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`may be reflected by the prior art of record. See Okajima v. Bourdeau, 261
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`F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579
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`(Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
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`We agree with Patent Owner to the extent that one of skill in the art
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`would not consider using a CSMA/CA protocol in a master/slave
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`configuration. PO Resp. 21. That combination, however, is not
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`contemplated by the asserted ground of unpatentability. As Patent Owner
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`and Dr. Koopman recognize, the transmitted data used in Boer to effect the
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`CSMCA/CA protocol would be “totally unnecessary” in a master/slave
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`configuration. Id.; Ex. 2302 ¶ 96.
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`3. APA and Boer — Conclusion
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`Upon review of the Petition and supporting evidence, as well as the
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`Patent Owner Response and supporting evidence, we conclude that
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`Petitioner has demonstrated, by a preponderance of the evidence, that claims
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`38 and 47 are unpatentable for obviousness over APA and Boer.
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`III. CONCLUSION
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`Petitioner has demonstrated by a preponderance of the evidence that
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`claims 38 and 47 are unpatentable for obviousness over APA and Boer.
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`IV. ORDER
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`In consideration of the foregoing, it is
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`ORDERED that the trial is terminated with respect to claims 32, 34,
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`40, 43, and 44;
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`FURTHER ORDERED that claims 38 and 47 of the ’580 patent are
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`unpatentable; and
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`FURTHER ORDERED that, because this is a final written decision,
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`parties to the proceeding seeking judicial review of the decision must
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`comply with the notice and service requirements of 37 C.F.R. § 90.2.
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`IPR2014-00519
`Patent 8,023,580 B2
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`Petitioner
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`
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`Jeffrey A. Miller
`Daniel G. Cardy
`DICKSTEIN SHAPIRO LLP
`millerj@dicksteinshapiro.com
`cardyd@dicksteinshapiro.com
`Samsung.Rembrandt@dicksteinshapiro.com
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`Patent Owner
`
`Thomas Engellenner
`Reza Mollaaghababa
`Lana Gladstein
`PEPPER HAMILTON LLP
`engellennert@pepperlaw.com
`mollaaghababar@pepperlaw.com
`gladsteinl@pepperlaw.com
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`12