IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Patent of: Hays et al.
`U.S. Patent No.: 5,659,891 Attorney Docket No.: 39521-0004IP1
`Issue Date:
`Aug. 19, 1997
`Appl. Serial No.: 08/480,718
`Filing Date:
`Jun. 7, 1995
`Title:
`MULTICARRIER TECHNIQUES IN BANDLIMITED CHANNELS
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`
`
`PETITION FOR INTER PARTES REVIEW OF UNITED STATES PATENT NO. 5,659,891
`PURSUANT TO 35 U.S.C. §§ 311–319, 37 C.F.R. § 42
`
`i
`
`

`

`TABLE OF CONTENTS
`
`MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1) .......................................... 1
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) ........................................... 1
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2) .................................................... 1
`C. Counsel Under 37 C.F.R. § 42.8(b)(3) and Service Information ......................... 1
`
`PAYMENT OF FEES – 37 C.F.R. § 42.103 ............................................................... 2
`
`REQUIREMENTS FOR IPR UNDER 37 C.F.R. §§ 42.104 ........................................ 2
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a) ........................................... 2
`B. Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested .......................... 2
`C. Claim Construction under 37 C.F.R. §§ 42.104(b)(3) ......................................... 3
`“Single mask-defined, bandlimited channel” (Claims 1, 3, and 5) ........................ 3
`“Plurality of Transmitters” (Claim 5) ..................................................................... 4
`“Paging” (Claims 1, 3, 5) ..................................................................................... 5
`
`1.
`2.
`3.
`
`SUMMARY OF THE ‘891 PATENT ........................................................................... 6
`A. Brief Description ................................................................................................. 6
`B. Summary of the Prosecution History of the ’891 Patent ..................................... 7
`
`I.
`
`II.
`
`III.
`
`IV.
`
`V.
`
`MANNER OF APPLYING CITED PRIOR ART TO EVERY CLAIM FOR WHICH AN
`IPR IS REQUESTED, THUS ESTABLISHING A REASONABLE LIKELIHOOD
`THAT AT LEAST ONE CLAIM OF THE ‘891 PATENT IS UNPATENTABLE .......... 7
`A.
`[GROUND 1] – Petrovic Anticipates Claims 1-5 ................................................. 8
`1.
`Claim 1 ................................................................................................... 14
`2.
`Claim 2 ................................................................................................... 17
`3.
`Claim 3 ................................................................................................... 19
`4.
`Claim 4 ................................................................................................... 22
`5.
`Claim 5 ................................................................................................... 23
`[GROUND 2] – Petrovic in view of Raith and Alakija Renders Claim 5 Obvious
` ......................................................................................................................... 26
`[GROUND 3] – Cimini Anticipates Claims 1-5 .................................................. 33
`1.
`Claim 1 ................................................................................................... 36
`2.
`Claim 2 ................................................................................................... 39
`3.
`Claim 3 ................................................................................................... 39
`4.
`Claim 4 ................................................................................................... 42
`5.
`Claim 5 ................................................................................................... 42
`[GROUND 4] – Cimini in view of Raith and Alakija Renders Claim 5 Obvious .. 47
`
`B.
`
`C.
`
`D.
`
`VI.
`
`REDUNDACY ......................................................................................................... 53
`
`VII. CONCLUSION ........................................................................................................ 53
`
`
`
`ii
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`

`

`Attorney Docket No. 39521-0004IP1
`IPR of U.S. Patent No. 5,659,891
`
`EXHIBITS
`
`
`APPLE-1001
`
`APPLE-1002
`
`U.S. Patent No. 5,659,891 to Hays et al. (“the ‘891 patent”)
`
`Excerpts from the Prosecution History of the ‘891 Patent (“the Prose-
`cution History”)
`
`APPLE-1003
`
`Docket for Mobile Telecommunications Technologies, LLC v. Apple
`Inc., Case No. 2:13-CV-258 (E.D. Tex.)
`
`APPLE-1004
`
`Declaration of Dr. Apostolous Kakaes (“Kakaes Declaration”)
`
`APPLE-1005
`
`APPLE-1006
`
`APPLE-1007
`
`APPLE-1008
`
`APPLE-1009
`
`Plaintiff’s Opening Brief on Issues of Claim Construction from Mobile
`Telecommunications Technologies, LLC v. Apple Inc., Civil Action No.
`2:13-cv-258-JRG-RSP (E.D. Tex.)
`
`Claim Construction Order from Mobile Telecommunications Technolo-
`gies, LLC v. Apple Inc., Civil Action No. 2:13-cv-258-JRG-RSP (E.D.
`Tex.)
`
`Claim Construction Order from Mobile Telecommunications Technolo-
`gies, LLC v. Clearwire Corp., Civil Action No. 2:12-cv-308-JRG-RSP
`(E.D. Tex.)
`
`Dr. Rade Petrovic et al., Permutation Modulation for Advanced Radio
`Paging, IEEE Proceedings of Southeastcon '93 (7 Apr 1993) (“Pe-
`trovic”)
`
`Leonard J. Cimini, Analysis and Simulation of a Digital Mobile Channel
`Using Orthogonal Frequency Division Multiplexing, 33 IEEE Transac-
`tions on Communications 665 (Jul. 1985) (“Cimini”)
`
`APPLE-1010
`
`WIPO Publication No. 1989/008355 to Raith et al. (“Raith”)
`
`APPLE-1011
`
`C. Alakija and S. P. Stapleton, A Mobile Base Station Phased Array
`Antenna, 1992 IEEE International Conference on Selected Topics in
`Wireless Communications at 118 (Jun. 1992) (“Alakija”)
`
`iii
`
`

`

`APPLE-1012
`
`U.S. Patent No. 5,590,403 to Cameron et al. (the ‘403 Patent)
`
`
`
`Attorney Docket No. 39521-0004IP1
`IPR of U.S. Patent No. 5,659,891
`
`iv
`
`

`

`Apple Inc. (“Petitioner” or “Apple”) petitions for Inter Partes Review (“IPR”) under 35
`
`U.S.C. §§ 311–319 and 37 C.F.R. § 42 of claims 1-5 (“the Challenged Claims”) of U.S. Pa-
`
`tent No. 5,659,891 (“the ‘891 patent”), of assignee Mobile Telecommunications Technolo-
`
`gies, LLC (“Patentee” or “MTel”). As explained in this petition, there exists a reasonable
`
`likelihood that Apple will prevail with respect to at least one of the Challenged Claims.
`
`I.
`
`MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1)
`
`A.
`
`Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`
`
`
`Petitioner, Apple Inc., is the real party-in-interest.
`
`B.
`
`Related Matters Under 37 C.F.R. § 42.8(b)(2)
`
`Apple is not aware of any terminal disclaimers for the ‘891 Patent. The ‘891 Patent
`
`is involved in three pending litigations (the Litigations), one naming Apple as a defendant:
`
`Mobile Telecommunications Technologies, LLC v. Apple Inc., Case No. 2:13-CV-258 (E.D.
`
`Tex.) (hereinafter “the Apple litigation”); Mobile Telecommunications Technologies, LLC v.
`
`Leap Wireless International, Inc., Case No. 2-13-CV-885 (E.D. Tex.); and Mobile Telecom-
`
`munications Technologies, LLC v. T-Mobile USA, Inc., Case No. 2-13-CV-886 (E.D. Tex.).
`
`C.
`
`Counsel Under 37 C.F.R. § 42.8(b)(3) and Service Information
`
`Apple designates W. Karl Renner, Reg. No. 41,265, as Lead Counsel and Thomas
`
`A. Rozylowicz, Reg. No. 50,620, as Backup Counsel, both available at 3200 RBC Plaza, 60
`
`South Sixth Street, Minneapolis, MN 55402 (T: 202-783-5070, F: 202-783-2331). Please
`
`address all correspondence and service to counsel at the address provided in this section.
`
`Apple also consents to electronic service by email at IPR39521-0004IP1@fr.com.
`
`
`
`1
`
`

`

`Attorney Docket No. 39521-0004IP1
`IPR of U.S. Patent No. 5,659,891
`
`II.
`
`PAYMENT OF FEES – 37 C.F.R. § 42.103
`
`Apple authorizes the Patent and Trademark Office to charge Deposit Account No.
`
`06-1050 for the fee set in 37 C.F.R. § 42.15(a) for this Petition and further authorizes pay-
`
`ment for any additional fees to be charged to this Deposit Account.
`
`III.
`
`REQUIREMENTS FOR IPR UNDER 37 C.F.R. §§ 42.104
`
`A.
`
`Grounds for Standing Under 37 C.F.R. § 42.104(a)
`
`Apple certifies that the ‘891 Patent is eligible for IPR and that Apple is not barred or
`
`estopped from requesting IPR. The present petition is being filed within one year of when
`
`Apple’s waiver of service was filed in the co-pending district court litigation, Case No. 2:13-
`
`CV-258. See APL-1011, p. 9; see also Macauto U.S.A. v. BOS GMBH & KG (IPR2012-
`
`00004), Paper No. 18 at 16.
`
`B.
`
`Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested
`
`Apple requests IPR of the Challenged Claims of the ‘891 Patent on the grounds set
`
`forth in the table below, and requests that each of the claims be found unpatentable.
`
`Ground
`
`‘891 Patent Claims
`
`Basis for Rejection
`
`Ground 1
`
`1-5
`
`§ 102 based on Petrovic
`
`Ground 2
`
`5
`
`§ 103 based on Petrovic in view of Raith and Alakija
`
`Ground 3
`
`1-5
`
`§ 102 based on Cimini
`
`Ground 4
`
`5
`
`§ 103 based on Cimini in view of Raith and Alakija
`
`
`
`
`
`
`
`
`
`2
`
`

`

`Attorney Docket No. 39521-0004IP1
`IPR of U.S. Patent No. 5,659,891
`
`The ‘891 patent issued from an application filed on June 7, 1995. The ‘891 patent
`
`does not claim priority to any previous applications.
`
`Petrovic, Cimini, Raith, and Alakija each qualify as prior art under 35 U.S.C § 102(b).
`
`Specifically, they were each published no later than April 7, 1993, which is more than one
`
`year prior to the June 7, 1995 priority date to which the ‘891 patent is entitled. None of tese
`
`references has never before been considered by the Patent Office in this case
`
`C.
`
`Claim Construction under 37 C.F.R. §§ 42.104(b)(3)
`
`
`
`A claim subject to IPR is given its “broadest reasonable construction in light of the
`
`specification of the patent in which it appears.” 1 37 C.F.R. § 42.100(b). Accordingly, for
`
`purposes of this proceeding only, Apple submits constructions for the following terms. All
`
`remaining terms should be given their plain meaning.
`
`1.
`
`“Single mask-defined, bandlimited channel” (Claims 1, 3,
`and 5)
`
`Under the broadest reasonable construction standard, Petitioner proposes that a
`
`“single mask-defined, bandlimited channel” be construed at least broadly enough to encom-
`
`pass “a channel confined to a frequency range.” This is the construction upon which both
`
`parties agreed in the Apple litigation. See Ex. 1006, p. 76.
`
`
`1 Because the standards of claim interpretation applied in litigation differ from PTO proceed-
`
`ings, any interpretation of claim terms in this IPR is not binding upon Apple in any litigation
`
`related to the subject patent. See In re Zletz, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989).
`
`3
`
`

`

`With regard to mask-defined, bandlimited channels, the ‘891 patent describes the fol-
`
`Attorney Docket No. 39521-0004IP1
`IPR of U.S. Patent No. 5,659,891
`
`lowing:
`
`[A]ccording to the present invention, increased transmission capacity is
`
`achieved by operating more than one carrier in a standard bandlimited chan-
`
`nel assigned for mobile paging use, such as in the Narrowband Personal
`
`Communications Service or the Part 22 Service. In the modulation technique
`
`of the present invention, carriers operating at different frequencies are fit with-
`
`in a single bandwidth allocation in a manner consistent with FCC mask re-
`
`quirements.
`
`Ex. 1001, 5:11-19.
`
`In other words, the “bandlimit” and “mask” that define the mobile paging channel de-
`
`scribed in the ‘891 patent simply refer to a “standard” range of frequencies that meet certain
`
`FCC requirements for mobile paging channels. Accordingly, one of ordinary skill in the art
`
`would have understood a “single mask-defined, bandlimited channel” to be a channel con-
`
`fined to a frequency range (e.g., the “Narrowband Personal Communications Service” fre-
`
`quency range defined by the FCC).
`
`2.
`
`“Plurality of Transmitters” (Claim 5)
`
`In Mobile Telecommunications Technologies, LLC v. Clearwire Corp., Case No.
`
`2:12-CV-308 (E.D. Tex.) (“the Clearwire Litigation”), a previous case that involved only U.S.
`
`Patent No. 5,590,403 (“the ‘403 Patent”), the district court construed the term “transmitter”
`
`according to its plain and ordinary meaning but offered the following additional conclusion:
`
`“[T]he Court rejects [Plaintiff’s] implication that transmitting multiple signals or outputs from a
`
`4
`
`

`

`Attorney Docket No. 39521-0004IP1
`IPR of U.S. Patent No. 5,659,891
`
`single structural unit can suffice as multiple transmitters.” Ex. 1007, p. 2. In the Apple Liti-
`
`gation, the district court adopted the same construction and reiterated the same conclusion
`
`for the claim term “transmitter” found in the asserted ‘403 Patent, ‘891 Patent, and U.S. Pa-
`
`tent No. 5,915,210 (“the ‘210 Patent”).
`
`In the ‘403 Patent and ‘210 Patent, which share the same specification, a configura-
`
`tion that emanates multiple carriers from a common transmission source (e.g., antenna
`
`1320) is referred to as a single transmitter or base transmitter unit. See Ex. 1001, FIGS. 13
`
`and 14, 15:41-16:23. However, in the ‘891 Patent, a configuration that emanates multiple
`
`carriers from a common transmission source (e.g., antenna 15) is referred to as a “co-
`
`located transmitter system.” See Ex. 1001, FIGS. 1 and 2, col. 4:7-11. In addition, claim 5
`
`of the ‘891 Patent requires “co-locating said plurality of transmitters such that said plurality
`
`of carriers can be emanated from the same transmission source.” Ex. 1001, 6:35-37.
`
`Accordingly, for purposes of this petition in which the broadest reasonable interpreta-
`
`tion applies, the term “plurality of transmitters” in the ‘891 Patent encompasses a configura-
`
`tion in which multiple carriers are emanated from the same transmission source (e.g., as
`
`illustrated in FIGS. 1 and 2).
`
`3.
`
`“Paging” (Claims 1, 3, 5)
`
`The preambles of independent claims 1, 3, and 5 recite the term “paging.” In particu-
`
`lar, claim 1 recites “[a] method of operating a plurality of paging carriers.” Claim 3 recites
`
`“[a] method of operating at least two paging carriers.” Claim 5 recites “a paging system hav-
`
`5
`
`

`

`Attorney Docket No. 39521-0004IP1
`IPR of U.S. Patent No. 5,659,891
`
`ing a plurality of transmitters.” This is the only recited occurrence of the term “paging.”
`
`Petitioner submits that the broadest reasonable interpretation of the term “paging”
`
`should at least encompass the construction advanced by Patent Owner during litigation.
`
`And, in the Apple Litigation, the Patent Owner argued that “paging” is a non-limiting “de-
`
`scriptive name for the systems in which the methods recited by the Claims may be per-
`
`formed.” See Ex. 1006, p. 17. Accordingly, for purposes of this petition in which the broad-
`
`est reasonable interpretation standard applies, Petitioner proposes that the term “paging” be
`
`construed as a non-limiting descriptive name for the systems in which the methods recited
`
`by the Claims may be performed.
`
`IV.
`
`SUMMARY OF THE ‘891 PATENT
`
`A.
`
`Brief Description
`
`In general, the ‘891 patent relates to operating more than one carrier within a single
`
`channel. The Abstract of the ‘891 patent states:
`
`A method of multicarrier modulation using co-located transmitters to achieve
`
`higher transmission capacity for mobile paging and two-way digital communi-
`
`cation in a manner consistent with FCC emission mask limits. Co-location of
`
`the transmitters obviates the need for stringent, symmetrical subchannel inter-
`
`ference protection and provides for a wider range of operating parameters,
`
`including peak frequency deviation, bit rate, and carrier frequencies, to obtain
`
`optimal transmission performance.
`
`The ‘891 patent includes 5 claims, of which claims 1, 3 and 5 are independent.
`
`
`
`6
`
`

`

`Attorney Docket No. 39521-0004IP1
`IPR of U.S. Patent No. 5,659,891
`
`B.
`
`Summary of the Prosecution History of the ’891 Patent
`
`The ‘891 patent issued on August 19, 1997 from U.S. Patent Application No.
`
`08/480,718, which was filed on June 7, 1995 with original claims 1-8, of which claims 1, 3,
`
`and 5 were independent. See Ex. 1002, pp. 47-48.
`
`In the first Office Action, the Examiner immediately allowed claims 1 and 2, rejected
`
`claims 3 and 4 solely under 35 U.S.C. 112, rejected claims 5-7 based on U.S. Patent No.
`
`3,488,445, and objected to claim 8 as allowable if rewritten in independent format. In par-
`
`ticular, the Office Action noted:
`
`As to claims 1, 3 and 8, the frequency difference between the center frequen-
`
`cy of the outer most carriers and the band edge of the mask is greater than
`
`half the frequency difference between the center frequencies of each adjacent
`
`carrier, is not taught or suggested in the prior art of record.
`
`Ex. 1002, p. 96.
`
`The Applicant amended claim 3 to overcome the section 112 rejection, rewrote claim
`
`8 in independent form to include the features of independent claim 5, and eventually can-
`
`celled rejected claims 5-7.
`
`V.
`
`MANNER OF APPLYING CITED PRIOR ART TO EVERY CLAIM FOR
`WHICH AN IPR IS REQUESTED, THUS ESTABLISHING A REASONABLE
`LIKELIHOOD THAT AT LEAST ONE CLAIM OF THE ‘891 PATENT IS UN-
`PATENTABLE
`
`In this Section, Apple proposes grounds of rejection for the Challenged Claims and,
`
`thus, explains the justification for IPR. The references presented in this Section demon-
`
`strate that the features found to justify allowance of independent claims 1, 3, and 5, as well
`
`7
`
`

`

`Attorney Docket No. 39521-0004IP1
`IPR of U.S. Patent No. 5,659,891
`
`as the other features of these claims, were known in the art and therefore establish a rea-
`
`sonable likelihood that at least independent claims 1, 3, and 5 are unpatentable.
`
`As noted above, the Examiner found that the record before him lacking with regard
`
`to a single feature: that the frequency difference between the center frequency of the outer
`
`most carriers and the band edge of the mask is greater than half the frequency difference
`
`between the center frequencies of each adjacent carrier. As fully described below, Petrovic
`
`and Cimini disclose this feature, together with the other features of the claims for which an
`
`IPR is being sought.
`
`A.
`
`[GROUND 1] – Petrovic Anticipates Claims 1-5
`
`The features of claims 1-5 of the ‘891 patent are anticipated by Petrovic, rendering
`
`each of these claims unpatentable under 35 U.S.C. § 102(b).
`
`Petrovic is a paper presented at the 1993 IEEE SoutheastCon by Dr. Rade
`
`Petrovic and two of the inventors of the ‘891 patent Walt Roehr and Dennis Camer-
`
`on. As a result, Petrovic describes a nearly identical system to the one described
`
`and claimed in the ‘891 patent.
`
`In particular, Petrovic describes the authors’ “efforts to increase both bit rate
`
`and spectral efficiency in simulcast paging networks.” Ex. 1008, p. 1, Introduction.
`
`To accomplish this goal, Petrovic outlines a “multicarrier permutation modulation
`
`technique” that “can be used in simulcast networks with high power transmitters.”
`
`Ex. 1008, p. 1, abstract. This type of modulation is often classified as Multicarrier
`
`8
`
`

`

`Attorney Docket No. 39521-0004IP1
`IPR of U.S. Patent No. 5,659,891
`
`Modulation (MCM). Ex. 1008, p. 1, Proposed Modulation Technique. The MCM
`
`technique described by Petrovic involves encoding data across eight subcarrier fre-
`
`quencies within a band-limited channel. See Ex. 1008, p. 1, Proposed Modulation
`
`Technique; see also Ex. 1004, ¶ 18. “The signal spectrum at transmitter output is
`
`presented in Fig. 1, and 2.” Ex. 1008, p. 2, Experiments.
`
`The proposed multicarrier permutation modulation technique includes “moving
`
`the current emission mask boundaries away from the center frequency by +/- 12.5
`
`kHz. Ex. 1008, p. 1, Proposed Modulation Technique. This would give a 35 kHz
`
`pass band in the middle of the channel and 7.5 kHz guard bands on each side for the
`
`skirts of the spectrum.” Ex. 1008, p. 1, Proposed Modulation Technique. To illus-
`
`trate the mask boundaries of the band-limited channel, Petrovic guides the reader to
`
`“[s]ee dashed lines in Figs. 1 and 2,” which “represent[] the proposed emission
`
`mask.” Ex. 1008, p. 1, Proposed Modulation Technique; p. 2, Experiments. The fol-
`
`lowing Annotation 1 of FIG. 1 highlights the guard bands with relation to the mask
`
`boundaries. See Ex. 1004, ¶ 19.
`
`9
`
`

`

`Attorney Docket No. 39521-0004IP1
`IPR of U.S. Patent No. 5,659,891
`
`These 7.5 kHz guard bands are each only a portion of the frequency differ-
`
`ence between the center frequency of the outer most of the carriers and the band
`
`edge of the mask defining the channel. Thus, the frequency difference between the
`
`center frequency of the outer most of the carriers and the band edge of the mask de-
`
`
`
`fining the channel is greater than 7.5 kHz.
`
`Petrovic further describes that, “[i]n order to fully utilize the allocated spectrum, and
`
`provide fast fall-off of the spectrum in the guard band we propose eight subcarriers spaced
`
`5 kHz apart, so that there is exactly 35 kHz spacing between end subcarriers.” See Ex.
`
`10
`
`50 kHz
`Channel
`
`7.5 kHz
`Guard Band
`
`7.5 kHz
`Guard Band
`
`

`

`1008, p. 1. The following Annotation 2 of FIG. 1 highlights the spacing between the center
`
`frequency of the subcarriers described by Petrovic. See Ex. 1004, ¶ 21.
`
`Attorney Docket No. 39521-0004IP1
`IPR of U.S. Patent No. 5,659,891
`
`
`
`Taking these teachings together, Petrovic describes a guard band of 7.5 kHz (as
`
`shown in Annotation 1) and a spacing between the center frequency of adjacent carriers of
`
`5 kHz (as shown in Annotation 2). In other words, the frequency difference between the
`
`center frequency of the outer most of the carriers and the band edge of the mask defining
`
`said channel (which is greater than 7.5 kHz) is more than half the frequency difference be-
`
`tween the center frequencies of each adjacent carrier (which is 5 kHz), as required by claim
`
`1. Thus, Petrovic describes the feature that led to the allowance of the ‘891 patent.
`
`11
`
`35 kHz
`Spacing
`
`5 kHz
`Spacing
`
`

`

`Attorney Docket No. 39521-0004IP1
`IPR of U.S. Patent No. 5,659,891
`
`In Petrovic’s modulation scheme, adjacent subcarriers partially overlap each other.
`
`The following Annotation 3 of FIG. 1 shows the hypothetical position of the eight subcarriers
`
`within the bandlimited channel, with carriers/subchannels 1, 2, 4 and 8 being 'ON' and carri-
`
`er/subchannels 3, 5, 6, and 7 being ‘OFF’.
`
`
`
`Where the value of the transmitted signal between carrier/subchannel 1 and carri-
`
`er/subchannel 2 (highlighted in blue below) does not return to practical zero (highlighted as
`
`a red broken line that extends the lowest point of the mask), the carrier/subchannel 1 over-
`
`laps adjacent carrier/subchannel 2. This is illustrated in the following Annotation 4 of an ex-
`
`cerpt of FIG. 1, which is shown side-by-side with a similarly annotated FIG. 5A of the ‘891
`
`patent to illustrate the similar type of overlap.
`
`12
`
`Carrier 2
`
`Carrier 3
`
`Carrier 5
`Carrier 7
`Carrier 4
`Carrier 6
`
`Carrier 1
`
`Carrier 8
`
`

`

`Attorney Docket No. 39521-0004IP1
`IPR of U.S. Patent No. 5,659,891
`
`
`
`Petrovic describes using a transmitter with four subtransmitters to transmit the eight
`
`subcarriers. Ex. 1008, p. 2, Experiments. In particular, “[e]ach transmitter has four sub-
`
`transmitters capable of 4-FSK over a subset of the 8 frequencies. Outputs of the subtrans-
`
`mitters are combined and sent to a common antenna.” Id. Thus, each of the eight subcar-
`
`riers are transmitted from the same location (i.e., the common antenna). See Ex. 1004, ¶
`
`25.
`
`In addition to the elements discussed above with regard to claims 1-4, claim 5 in-
`
`cludes an additional element that requires “co-locating said plurality of transmitters…” As
`
`described in Section III(C)(2), supra, the broadest reasonable interpretation of the term “plu-
`
`rality of transmitters” should encompass a configuration in which multiple carriers are ema-
`
`nated from the same antenna. Under this interpretation, Petrovic anticipates claim 5.
`
`13
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`Carrier 2
`
`Carrier 1
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`

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`Attorney Docket No. 39521-0004IP1
`IPR of U.S. Patent No. 5,659,891
`
`In particular, Petrovic describes that “[e]ach transmitter has four subtransmitters ca-
`
`pable of 4-PSK over a subset of the 8 frequencies. Outputs of the subtransmitters are com-
`
`bined and sent to a common antenna.” Ex. 1008, p. 2, Experiments. A block diagram of the
`
`four “subtransmitters” described by Petrovic would be structured in a similar manner to the
`
`systems shown in either of Figures 1 and 2 of the ‘891 patent, except with four data sources
`
`and modulators instead of two. See Ex. 1004, ¶ 26. Moreover, Petrovic describes that
`
`“[o]utputs of the subtransmitters are combined and sent to a common antenna [i.e.,
`
`transmission source].” Ex. 1008, p. 2, Experiments (emphasis added). Therefore, under
`
`the broadest reasonable interpretation standard, the four subtransmitters described by Pe-
`
`trovic read on “co-locating [a] plurality of transmitters such that said plurality of carriers can
`
`be emanated from the same transmission source,” as recited in claim 5.
`
`1. Claim 1
`
`A method of operating a plurality of paging carriers in a single mask-defined,
`
`bandlimited channel comprising the step of
`
`Petrovic describes: “The multicarrier permutation modulation technique proposed in
`
`this paper provides higher bit rates and spectrum efficiencies than that achieved in any
`
`state-of-the-art radio paging system. It can be used in simulcast networks with high power
`
`transmitters, where long symbol intervals and noncoherent detection are required." Ex.
`
`1008, p. 1, Abstract (emphasis added).
`
`14
`
`

`

`Attorney Docket No. 39521-0004IP1
`IPR of U.S. Patent No. 5,659,891
`
`Furthermore, Petrovic describes the use of a mask to define a bandlimited channel:
`
`"First we propose doubling the channel bandwidth in order to allow higher throughput. This
`
`should be done by moving the current emission mask boundaries away from the center
`
`frequency by +/- 12.5 kHz. This would give a 35 kHz pass band in the middle of the chan-
`
`nel and 7.5 kHz guard bands on each side for the skirts of the spectrum." Ex. 1008, p. 1,
`
`Proposed Modulation Technique (emphasis added). In other words, Petrovic describes a
`
`bandlimit (i.e., a pass band of the channel) of 35 kHz. See Ex. 1004, ¶ 19-21.
`
`Additionally, Petrovic describes a plurality of carriers on the same channel: "In order
`
`to fully utilize the allocated spectrum, and provide fast fall-off of the spectrum in the guard
`
`band we propose eight subcarriers spaced 5 kHz apart, so that there is exactly 35 kHz
`
`spacing between end subcarriers." Ex. 1008, p. 1, Proposed Modulation Technique.
`
`transmitting said carriers from the same location with said carriers having center fre-
`
`quencies within said channel
`
`Petrovic describes a transmitter that transmits data over eight subcarriers via a sin-
`
`gle antenna (i.e., the “same location”): "Each transmitter has four subtransmitters capable of
`
`4-PSK over a subset of the 8 frequencies. Outputs of the subtransmitters are combined and
`
`sent to a common antenna." Ex. 1008, p. 2, Experiments.
`
`“In order to fully utilize the allocated spectrum, and provide fast fall-off of the spec-
`
`trum in the guard band we propose eight subcarriers spaced 5 kHz apart, so that there is
`
`exactly 35 kHz spacing between end subcarriers.” Ex. 1008, p. 1, Proposed Modulation
`
`15
`
`

`

`Technique. In other words, each carrier is centrally located within evenly spaced subchan-
`
`nels such that the center frequency of each carrier is 5 kHz apart, as shown in the following
`
`Attorney Docket No. 39521-0004IP1
`IPR of U.S. Patent No. 5,659,891
`
`Annotation 2 of FIG. 1:
`
`See Ex. 1004, ¶ 21-22.
`
`
`
`such that the frequency difference between the center frequency of the outer most of
`
`said carriers and the band edge of the mask defining said channel is more than half the fre-
`
`quency difference between the center frequencies of each adjacent carrier.
`
`Petrovic describes that the frequency difference between the center frequency of the
`
`outer most of said carriers and the band edge of the mask defining said channel is more
`
`than half the frequency difference between the center frequencies of each adjacent carrier.
`
`In particular, Petrovic describes: "First we propose doubling the channel bandwidth
`
`in order to allow higher throughput. This should be done by moving the current emission
`
`16
`
`35 kHz
`Spacing
`
`5 kHz
`Spacing
`
`

`

`Attorney Docket No. 39521-0004IP1
`IPR of U.S. Patent No. 5,659,891
`
`mask boundaries away from the center frequency by +/- 12.5 kHz. This would give a 35 kHz
`
`pass band in the middle of the channel and 7.5 kHz guard bands on each side for the skirts
`
`of the spectrum. . . . In order to fully utilize the allocated spectrum, and provide fast fall-off of
`
`the spectrum in the guard band we propose eight subcarriers spaced 5 kHz apart, so that
`
`there is exactly 35 kHz spacing between end subcarriers." Ex. 1008, p. 1, Proposed Modu-
`
`lation Technique.
`
`In other words, there is 5 kHz between the center frequencies of each adjacent car-
`
`rier and 7.5 kHz between the center frequency of the outer most of said carriers and the
`
`band edge of the mask defining the channel. 7.5 is more than half of 5. See Ex. 1004, ¶
`
`21-22. This is illustrated in the above Annotations 1 and 2 of FIG. 1.
`
`2.
`
`Claim 2
`
`The method of claim 1 wherein adjacent carriers overlap with each other.
`
`The following Annotation 3 of FIG. 1 clearly shows a case in which carri-
`
`ers/subchannels 1, 2, 4 and 8 are 'ON' and carrier/subchannels 3, 5, 6, and 7 are ‘OFF’:
`
`17
`
`

`

`Attorney Docket No. 39521-0004IP1
`IPR of U.S. Patent No. 5,659,891
`
`See Ex. 1004, ¶ 23; see also Ex. 1008, p. 2, Experiments.
`
`
`
`Moreover, where the value of the transmitted signal between carrier/subchannel 1
`
`and carrier/subchannel 2 (highlighted in blue below) does not return to practical zero (high-
`
`lighted as a red broken line that extends the lowest point of the mask), the carri-
`
`er/subchannel 1 overlaps adjacent carrier/subchannel 2. This is illustrated in the following
`
`Annotation 4 of an excerpt of FIG. 1:
`
`18
`
`Carrier 2
`
`Carrier 3
`
`Carrier 5
`Carrier 7
`Carrier 4
`Carrier 6
`
`Carrier 1
`
`Carrier 8
`
`

`

`Attorney Docket No. 39521-0004IP1
`IPR of U.S. Patent No. 5,659,891
`
`See Ex. 1004, ¶ 24.
`
`This is comparable to the overlap shown in FIG. 5A of the ‘891 patent:
`
`
`
`3.
`
`Claim 3
`
`
`
`A method of operating at least two paging carriers each in a corresponding sub-
`
`channel of a single mask-defined, bandlimited channel comprising the step of
`
`19
`
`Carrier 2
`
`Carrier 1
`
`

`

`Attorney Docket No. 39521-0004IP1
`IPR of U.S. Patent No. 5,659,891
`
`Petrovic describes: “The multicarrier permutation modulation technique proposed in
`
`this paper provides higher bit rates and spectrum efficiencies than that achieved in any
`
`state-of-the-art radio paging system. It can be used in simulcast networks with high power
`
`transmitters, where long symbol intervals and noncoherent detection are required." Ex.
`
`1008, p. 1, Abstract (emphasis added).
`
`Furthermore, Petrovic describes the use of a mask to define a bandlimited channel:
`
`"First we propose dou-bling the channel bandwidth in order to allow higher throughput. This
`
`should be done by moving the current emission mask boundaries away from the center
`
`fre-quency by +/- 12.5 kHz. This would give a 35 kHz pass band in the middle of the chan-
`
`nel and 7.5 kHz guard bands on each side for the skirts of the spectrum." Ex. 1008, p. 1,
`
`Proposed Modulation Technique (emphasis added). In other words, Petrovic describes a
`
`bandlimit (i.e., a pass band of the channel) of 35 kHz. See Ex. 1004, ¶ 19-21.
`
`Additionally, Petrovic describes a plurality of carriers on the same channel: "In order
`
`to fully utilize the allocated spectrum, and provide fast fall-off of the spectrum in the guard
`
`band we propose eight subcarriers spaced 5 kHz apart, so that there is exactly 35 kHz
`
`spacing between end subcarriers." Ex. 1008, p. 1, Proposed Modulation Technique.
`
`transmitting said carriers from the same location with each carrier centrally located in
`
`said corresponding subchannel
`
`Petrovic describes a transmitter that transmits data over eight subcarriers via a sin-
`
`gle antenna (i.e., the “same location”): "Each transmitter has four subtransmitters capable of
`
`20
`
`

`

`Attorney Docket No. 39521-0004IP1
`IPR of U.S. Patent