throbber
Paper 49
`Trials@uspto.gov
`571-272-7822
`
`Date Entered: September 17, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO. LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC.,
`SAMSUNG TELECOMMUNICATIONSAMERICA, LLC, and
`SAMSUNG AUSTIN SEMICONDUCTOR, LLC,
`Petitioner,
`
`v.
`
`REMBRANDT WIRELESS TECHNOLOGIES, LP,
`Patent Owner.
`____________
`
`Case IPR2014-00519
`Patent 8,023,580 B2
`____________
`
`
`
`
`Before JAMESON LEE, HOWARD B. BLANKENSHIP, and
`JUSTIN BUSCH, Administrative Patent Judges.
`
`
`BUSCH, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`

`
`IPR2014-00519
`Patent 8,023,580 B2
`
`
`
`I. BACKGROUND
`
`
`
`
`
`Samsung Electronics Co. Ltd., Samsung Electronics America, Inc.,
`
`Samsung Telecommunications America, LLC, and Samsung Austin
`
`Semiconductor, LLC (collectively, “Petitioner”) filed a request for inter
`
`partes review of claims 23, 25, 29, 30, 32, 34, 38, 40, 41, 43, 44, and 47 of
`
`U.S. Patent No. 8,023,580 B2 (“the ’580 patent,” Ex. 1301) under 35 U.S.C.
`
`§§ 311–319. The Board instituted an inter partes review of claims 32, 34,
`
`38, 40, 43, 44, and 47. Paper 16 (“Dec. on Inst.”).
`
`Subsequent to institution, Patent Owner Rembrandt Wireless
`
`Technologies, LP, filed a Notice of Filing a Disclaimer (Paper 26),
`
`indicating that Patent Owner filed a disclaimer under 35 U.S.C. § 1.321(a)
`
`disclaiming claims 32, 34, 40, 43, and 44. Therefore, the trial is terminated
`
`with respect to claims 32, 34, 40, 43, and 44. See 37 C.F.R. §§ 42.72, 42.73.
`
`Patent Owner also filed a patent owner response (Paper 25, “PO Resp.”).
`
`Petitioner filed a reply to the Patent Owner Response (Paper 34, “Pet.
`
`Reply”).
`
`Oral hearing was held on April 24, 2015.1
`
`The Board has jurisdiction under 35 U.S.C. § 6(c). This final written
`
`decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`
`For the reasons that follow, we determine that Petitioner has shown by
`
`a preponderance of the evidence that claims 38 and 47 of the ’580 patent are
`
`unpatentable.
`
`
`
`
`1 The record includes a transcript of the oral hearing. Paper 48.
`2
`
`
`

`
`IPR2014-00519
`Patent 8,023,580 B2
`
`
`A. Related Proceedings
`
`
`
`
`
`According to Petitioner, the ’580 patent is involved in the following
`
`district court proceeding: Rembrandt Wireless Technologies, LP v. Samsung
`
`Electronics Co., No. 2:13-cv-00213 (E.D. Tex. 2013). Pet. 2. The ’580
`
`patent also has been challenged in the following cases: Samsung Electronics
`
`Co. v. Rembrandt Wireless Technologies, LP , IPR2014-00514 (not
`
`instituted); Samsung Electronics Co. v. Rembrandt Wireless Technologies,
`
`LP, IPR2014-00515 (not instituted); and Samsung Electronics Co. v.
`
`Rembrandt Wireless Technologies, LP, IPR2014-00518 (final decision
`
`issuing concurrently).
`
`
`
`B. The ’580 Patent
`
`The ’580 patent issued from an application filed August 19, 2009,
`
`which claimed priority under 35 U.S.C. § 120 through a chain of intervening
`
`applications to an application filed December 4, 1998, and which further
`
`claimed priority under 35 U.S.C. § 119 to a provisional application filed
`
`December 5, 1997.
`
`The technical field of the patent relates to data communications and
`
`modulators/demodulators (modems) and in particular to a data
`
`communications system in which a plurality of modems uses different types
`
`of modulation in a network. Ex. 1301, 1:19–23, 1:56–2:20.
`
`
`
`
`
`
`
`3
`
`
`

`
`IPR2014-00519
`Patent 8,023,580 B2
`
`
`C. Illustrative Claim
`
`
`
`
`
`Illustrative claim 38 and claim 32, from which claim 38
`depends, are reproduced below:
`
`32. A communications device, comprising:
`
` a
`
` processor; and
`
` a
`
` 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.
`
`38. The device of claim 32, wherein the memory has
`stored therein program code for a multipoint communications
`protocol.
`
`
`D. Prior Art
`
`Boer
`
`US 5,706,428
`
`Jan. 6, 1998
`
`(Ex. 1304)
`
`
`
`
`E. Asserted Ground of Unpatentability
`
`The Board instituted inter partes review on the asserted grounds that
`
`claims 32, 34, 40, 43, and 44 of the ’580 patent are unpatentable as
`
`anticipated by Boer and claims 38 and 47 are unpatentable as obvious over
`
`Admitted Prior Art (“APA”) and Boer. Dec. on Inst. 16. Patent Owner’s
`
`4
`
`
`

`
`IPR2014-00519
`Patent 8,023,580 B2
`
`
`disclaimer, discussed above, leaves the anticipation ground as the only
`
`
`
`ground at issue in this proceeding.
`
`
`
`A. Prior Art
`
`II. ANALYSIS
`
`
`
`1. Admitted Prior Art
`
`Petitioner contends that the ’580 patent’s disclosed multipoint
`
`communication systems (or master/slave systems), depicted in Figures 1 and
`
`2 and described in column 3, line 40 through column 4, line 50, constitutes
`
`material that may be used as prior art against the patent under 35 U.S.C.
`
`§ 103(a). We agree. Figure 1 of the patent is labeled as “Prior Art.” Pet. 6;
`
`Ex. 1301, Fig. 1. Further, the ’580 patent’s specification refers to “prior art”
`
`multipoint communication system 22 comprising master modem or
`
`transceiver 24, which communicates with a plurality of tributary modems
`
`(“tribs”) or transceivers 26. Pet. 6; Ex. 1301, 3:40–44. Further, the ’580
`
`patent describes Figure 2 as illustrating the operation of the multipoint
`
`communication system of (prior art) Figure 1. Pet. 7; Ex. 1301, 3:9–10.
`
`2. Boer
`
`
`
`Boer describes a wireless LAN that includes first stations that operate
`
`at 1 or 2 Mbps (Megabits per second) data rate and second stations that
`
`operate at 1, 2, 5, or 8 Mbps data rate. Ex. 1304, Abstract.
`
`5
`
`
`

`
`IPR2014-00519
`Patent 8,023,580 B2
`
`
`
`Figure 1 of Boer is reproduced below.
`
`
`
`
`
`Figure 1 is said to be a block diagram of a wireless LAN embodying
`
`Boer’s invention. Ex. 1304, 1:53–54. LAN 10 includes access point 12,
`
`serving as a base station. The network includes mobile stations 18-1 and 18-
`
`2 that are capable of transmitting and receiving messages at a data rate of 1
`
`or 2 Mbps using DSSS (direct sequence spread spectrum) coding. When
`
`operating at 1 Mbps, a station uses DBPSK (differential binary phase shift
`
`keying) modulation. When operating at 2 Mbps, a station uses DQPSK
`
`(differential quadrature phase shift keying) modulation. Id. at 2:6–27.
`
`6
`
`
`

`
`IPR2014-00519
`Patent 8,023,580 B2
`
`
`Mobile stations 22-1 and 22-2 are capable of operating at the 1 and 2 Mbps
`
`
`
`data rates using the same modulation and coding as stations 181 and 182. In
`
`addition, stations 22-1 and 22-2 can operate at 5 and 8 Mbps data rates using
`
`PPM/DQPSK (pulse position modulation–differential quadrature phase shift
`
`keying) in combination with the DSSS coding. Id. at 2:34–44.
`
`
`
`B. Claims 38 and 47 – APA and Boer
`
`
`
`1. Asserted Ground
`
`Petitioner applies the teachings of the APA and Boer to demonstrate
`
`obviousness of the subject matter of illustrative claim 29 (which recites the
`
`similar limitation present in claims 38 and 47 of a multipoint
`
`communications protocol), relying on APA for teaching of master/slave
`
`communication systems. Pet. 37–43. Petitioner submits that a person
`
`having ordinary skill in the art would have been motivated to combine Boer
`
`with APA, referring to the Declaration of Dr. David Goodman (Ex. 1318
`
`¶¶ 162–170). Id. at 38–41. Petitioner maps the disclosures of Boer to claim
`
`32 (id. at 25–26) from which claim 38 depends and claims 40 (id. at 31–35)
`
`and 44 (id. at 37), from which claim 47 depends.
`
`Dr. Goodman testifies that polled multiport master/slave
`
`communications systems were well known to those of ordinary skill in the
`
`art for simplicity and determinacy, referring to Exhibit 1317. Ex. 1318
`
`¶ 169. Petitioner submits Exhibit 1317 (“Upender”) as a November 1994
`
`publication that compares various strengths and weaknesses for
`
`communication protocols for embedded systems. Ex. 1317, 7. The
`
`document states that polling is one of the more popular protocols for
`
`embedded systems “because of its simplicity and determinacy.” Id. In that
`
`7
`
`
`

`
`IPR2014-00519
`Patent 8,023,580 B2
`
`
`protocol, a centrally assigned master periodically sends a polling message to
`
`
`
`the slave nodes, giving them explicit permission to transmit on the network.
`
`Id. The protocol “is ideal for a centralized data-acquisition system where
`
`peer-to-peer communication and global prioritization are not required.” Id.
`
`2. Motivation to Combine
`
`
`
`Patent Owner argues, in its Response, that Upender does not reflect a
`
`proper motivation from the prior art for the proffered combination of Boer
`
`and APA. Patent Owner submits a Declaration from a co-author of Upender
`
`to show that the article did not suggest the use of a master/slave
`
`communication system. Ex. 2302 (Declaration of Dr. Philip Koopman).
`
`We have considered Patent Owner’s arguments and evidence but find
`
`that the clear teachings in Upender are not diminished or rebutted. Upender
`
`investigates tradeoffs in different communication protocols. The article
`
`concludes that CSMA/CA (carrier sense multiple access with collision
`
`avoidance), or RCSMA (reservation CSMA), is a good choice for some
`
`embedded systems. Ex. 1317, 10–11. The article also indicates that polling
`
`may not provide sufficient flexibility for “advanced systems,” classifying
`
`polling as “simple,” but noting that the discussion of the different protocol
`
`strengths and weaknesses “should allow you to select the best protocol to
`
`match your needs.” Id. at 10–11. In fact, Dr. Koopman admits that there are
`
`some systems for which master/slave is a better match for the design
`
`requirements. Pet. Reply 9; Ex. 1319, 39:2–20.
`
`That Upender may identify some advantages of CSMA/CA over a
`
`master/slave protocol is not a “teaching away” from the master/slave
`
`protocol. Upender teaches that master/slave protocols were widely used and
`
`8
`
`
`

`
`IPR2014-00519
`Patent 8,023,580 B2
`
`
`a good choice for simple systems. See In re Gurley, 27 F.3d 551, 553 (Fed.
`
`
`
`Cir. 1994) (“[A] person seeking to improve the art of flexible circuit boards,
`
`on learning from [a reference] that epoxy was inferior to polyester-imide
`
`resins, might well be led to search beyond epoxy for improved products.
`
`However, [the reference] also teaches that epoxy is usable and has been used
`
`for Gurley’s purpose.”).
`
`Patent Owner’s position appears to be that the prior art teaches that
`
`one and only one communication protocol should ever be used, which is
`
`directly contrary to the clear teachings of Upender. In view of Upender, one
`
`of ordinary skill in the art would have found it obvious to use a different
`
`prior art communication protocol (e.g., a simpler protocol) when using
`
`multiple data rates as described by Boer.
`
`Further, we agree with Petitioner that Boer does not describe CSMA
`
`as central to an alleged goal of seeking a “reduction of overhead-in-time per
`
`transmission,” but relates that reduction to the use of short acknowledgment
`
`(ACK) messages. PO Resp. 40; Pet. Reply 8; Ex. 1304, 8:16–29.
`
`Patent Owner submits that Dr. Goodman’s Declaration (Ex. 1318) is
`
`unreliable because it is unclear what level of skill it attributes to the ordinary
`
`artisan. PO Resp. 29–30. The alleged lack of clarity, however, does not
`
`affect the outcome. We note that specifying the level of ordinary skill in
`
`terms of an academic degree in a field of study and the number of years of
`
`practical working experience is generally unhelpful, as a practical matter,
`
`because it does not convey whether one with ordinary skill in the art would
`
`have been aware of anything specific or particular. Patent Owner has not
`
`directed us to evidence establishing what someone who has earned a certain
`
`degree or who has a certain number of years of experience necessarily
`
`9
`
`
`

`
`IPR2014-00519
`Patent 8,023,580 B2
`
`
`knows. It is not always necessary, however, to have an express proposition
`
`
`
`on the level of ordinary skill in the art. The level of ordinary skill in the art
`
`may be reflected by the prior art of record. See Okajima v. Bourdeau, 261
`
`F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579
`
`(Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
`
`We agree with Patent Owner to the extent that one of skill in the art
`
`would not consider using a CSMA/CA protocol in a master/slave
`
`configuration. PO Resp. 21. That combination, however, is not
`
`contemplated by the asserted ground of unpatentability. As Patent Owner
`
`and Dr. Koopman recognize, the transmitted data used in Boer to effect the
`
`CSMCA/CA protocol would be “totally unnecessary” in a master/slave
`
`configuration. Id.; Ex. 2302 ¶ 96.
`
`3. APA and Boer — Conclusion
`
`
`
`Upon review of the Petition and supporting evidence, as well as the
`
`Patent Owner Response and supporting evidence, we conclude that
`
`Petitioner has demonstrated, by a preponderance of the evidence, that claims
`
`38 and 47 are unpatentable for obviousness over APA and Boer.
`
`
`
`III. CONCLUSION
`
`Petitioner has demonstrated by a preponderance of the evidence that
`
`claims 38 and 47 are unpatentable for obviousness over APA and Boer.
`
`
`
`10
`
`
`

`
`IPR2014-00519
`Patent 8,023,580 B2
`
`
`
`IV. ORDER
`
`
`
`In consideration of the foregoing, it is
`
`ORDERED that the trial is terminated with respect to claims 32, 34,
`
`40, 43, and 44;
`
`FURTHER ORDERED that claims 38 and 47 of the ’580 patent are
`
`unpatentable; and
`
`FURTHER ORDERED that, because this is a final written decision,
`
`parties to the proceeding seeking judicial review of the decision must
`
`comply with the notice and service requirements of 37 C.F.R. § 90.2.
`
`
`
`11
`
`
`

`
`IPR2014-00519
`Patent 8,023,580 B2
`
`Petitioner
`
`
`
`
`
`Jeffrey A. Miller
`Daniel G. Cardy
`DICKSTEIN SHAPIRO LLP
`millerj@dicksteinshapiro.com
`cardyd@dicksteinshapiro.com
`Samsung.Rembrandt@dicksteinshapiro.com
`
`Patent Owner
`
`Thomas Engellenner
`Reza Mollaaghababa
`Lana Gladstein
`PEPPER HAMILTON LLP
`engellennert@pepperlaw.com
`mollaaghababar@pepperlaw.com
`gladsteinl@pepperlaw.com
`
`
`
`12

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