UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`APPLE INC.,
`Petitioner
`
`
`v.
`
`
`MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC
`Patent Owner
`
`____________
`
`
`Case IPR2014-01035
`Patent 5,659,891
`
`____________
`
`
`PATENT OWNER MOBILE TELECOMMUNICATIONS
`TECHNOLOGIES, LLC’S PRELIMINARY RESPONSE
`
`
`
`Mail Stop "PATENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`

`

`
`
`TABLE OF CONTENTS
`
`Page
`
`
`INTRODUCTION ........................................................................................... 1 
`I.
`BACKGROUND ............................................................................................. 3 
`II.
`III. PROPER CLAIM CONSTRUCTION ............................................................ 4 
`A.
`Construction of Independent Claim Terms ........................................... 6 
`1.
`“single mask-defined, bandlimited channel” .............................. 6 
`2.
`“band edge” ................................................................................. 8 
`3.
`“operating” of claims 1, 3, and 5 ................................................ 8 
`4.
`“each adjacent carrier” of claims 1, 3, and 5 .............................. 9 
`IV. REFERENCES RELIED UPON BY PETITIONER .................................... 10 
`A.
`Petrovic................................................................................................ 10 
`B.
`Raith .................................................................................................... 14 
`C.
`Alakija.................................................................................................. 14 
`D.
`Cimini .................................................................................................. 15 
`V. GROUND 1 – CLAIMS 1-5 ARE NOT ANTICIPATED BY
`PETROVIC. ................................................................................................... 16 
`A.
`Petrovic does not anticipate claims 1, 3, and 5. .................................. 16 
`B.
`Petrovic does not anticipate dependent claims 2 and 4. ..................... 29 
`VI. GROUND 2 – CLAIM 5 IS NOT OBVIOUS OVER PETROVIC IN
`VIEW OF RAITH AND ALAKIJA. ............................................................... 29 
`A.
`Petrovic in view of Raith and Alakija does not render claim 5
`obvious. ............................................................................................... 29 
`VII. GROUND 3 – CLAIMS 1-5 ARE NOT ANTICIPATED BY CIMINI. ...... 33 
`A.
`Cimini does not anticipate claims 1, 3, and 5. ..................................... 33 
`B.
`Cimini does not anticipate dependent claims 2 and 4. ........................ 40 
`VIII. GROUND 4 – CLAIM 5 IS NOT OBVIOUS OVER CIMINI IN
`VIEW OF RAITH AND ALAKIJA. ............................................................... 40 
`
`
`
`

`

`
`
`A.
`
`Cimini in view of Raith and Alakija does not render claim 5
`obvious. ............................................................................................... 40 
`IX. CONCLUSION .............................................................................................. 44 
`
`
`
`

`

`
`
`TABLE OF AUTHORITIES
`
`Page
`
`CASES 
`Advanced Display Sys. Inc. v. Kent State Univ., 212 F.3d 1272 (Fed. Cir.
`2000) ................................................................................................................... 17
`Ex parte Frye, 94 USPQ 2d 1072 (BPAI 2010) ............................................... 32, 42
`Facebook, Inc. v. Evolutionary Intelligence, LLC, IPR2014-00093, Paper 12
`(P.T.A.B. Apr. 28, 2014) ...................................................................................... 6
`In re Kahn, 441 F.3d 977 (Fed. Cir. 2006) .............................................................. 32
`In re Royka, 490 F.2d 981 (CCPA 1974) ......................................................... 29, 40
`In re Zletz, 13 USPQ2d 1320 (Fed. Cir. 1989) .......................................................... 5
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) ................................................ 32
`Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359 (Fed. Cir. 2008) .............. 17, 33
`Xerox Corp. v. 3Com Corp., 458 F.3d 1310 (Fed. Cir. 2006) ................................. 17
`
`OTHER AUTHORITIES 
`
`35 United States Code § 102 ...................................................................................... 3
`35 United States Code § 103 ...................................................................................... 3
`35 United States Code § 312(c) ................................................................................. 4
`37 Code of Federal Regulations § 42.100(b) ............................................................. 5
`37 Code of Federal Regulations § 42.104(b)(3) ........................................................ 4
`
`
`
`
`
`iii
`
`

`

`
`I.
`
`INTRODUCTION
`
`Patent Owner, Mobile Telecommunications Technologies, LLC, submits this
`
`Preliminary Response to the Petition for Inter Partes Review of claims 1-5 of U.S.
`
`Patent No. 5,659,891 (“the ‘891 Patent”). 37 C.F.R. § 42.107.
`
`Patent Owner respectfully requests that the Board deny the Petition on every
`
`ground alleged by Petitioner for, at least, the following reasons.
`
`First, with regard to Ground 1, Dr. Rade Petrovic et al., Permutation
`
`Modulation for Advanced Radio Paging, IEEE Proceedings of Southeastcon ‘93 (7
`
`April, 1993) (Exhibit 1008, “Petrovic”) does not teach, at least, the following
`
`elements of claims 1, 3 and 5 of the ‘891 Patent: (i) “a single mask-defined,
`
`bandlimited channel;” (ii) “operating or transmitting said carriers… such that the
`
`frequency difference between the center frequency of the outer most of said
`
`carriers and the band edge of the mask … is more than half the frequency
`
`difference between the center frequencies of each adjacent carrier;” and (iii)
`
`“operating or transmitting said carriers from the same location.” Dependent claims
`
`2 and 4 are not anticipated by Petrovic, because independent claims 1 and 3, from
`
`which they depend respectively, are not anticipated by Petrovic and because of the
`
`additional features they recite.
`
`Second, with regard to Ground 2, Petrovic does not teach limitations (i), (ii),
`
`and (iii) of claim 5, as described above. Therefore, Petrovic does not teach claim
`
`1
`
`

`

`
`5. Raith and Alakija either alone or in combination do not cure the defect of
`
`Petrovic with regard to limitations (i) and (ii). With regard to limitation (iii), Raith
`
`and Alakija do not cure the defect of Petrovic for at least three reasons. First,
`
`Petitioner’s combination is based on co-pending litigation positions, which is
`
`prohibited by the Board. Second, Petitioner has provided no articulated reasoning
`
`with some rational underpinning to support the legal conclusion of obviousness.
`
`Third, the combination would render the purpose of Petrovic locating two
`
`transmitters at different locations inoperable.
`
`Third, with regard to Ground 3, Leonard J. Cimini, Analysis and Simulation
`
`of a Digital Mobile Channel Using Orthogonal Frequency Division Multiplexing,
`
`33 IEEE Transactions on Communications 665 (Jul. 1985) (Exhibit 1009,
`
`“Cimini”) does not teach, at least, the following elements of claims 1, 3 and 5 of
`
`the ‘891 Patent: (i) “a single mask-defined, bandlimited channel;” (ii) “operating or
`
`transmitting said carriers… such that the frequency difference between the center
`
`frequency of the outer most of said carriers and the band edge of the mask … is
`
`more than half the frequency difference between the center frequencies of each
`
`adjacent carrier;” and (iii) “operating or transmitting said carriers from the same
`
`location.” Dependent claims 2 and 4 are not anticipated by Cimini, because
`
`independent claims 1 and 3, from which they depend respectively, are not
`
`anticipated by Cimini and because of the additional features they recite.
`
`
`
`2
`
`

`

`
`
`Fourth, with regard to Ground 4, Cimini does not teach limitations (i), (ii),
`
`and (iii) of claim 5, as described above. Therefore, Cimini does not teach claim 5.
`
`Raith and Alakija either alone or in combination do not cure the defect of Cimini
`
`with regard to limitations (i) and (ii). With regard to limitation (iii), Raith and
`
`Alakija do not cure the defect of Cimini for at least two reasons. First, Petitioner's
`
`combination is based on co-pending litigation positions, which is prohibited by the
`
`Board. Second, Petitioner has provided no articulated reasoning with some
`
`rational underpinning to support the legal conclusion of obviousness.
`
`Therefore, there is no reasonable likelihood that Petitioner can prevail with
`
`regard to claims 1-5 of the ‘891 Patent.
`
`II. BACKGROUND
`
`On June 27, 2014, Apple Inc. filed a Petition for Inter Partes Review under
`
`37 C.F.R. § 42.100, requesting inter partes review of claims 1-5 of the ’891 Patent.
`
`Petitioner asserts that claims 1-5 of the ’891 Patent are unpatentable over the
`
`following references under 35 U.S.C. §§ 102 and 103:
`
`(1) Claims 1-5 as anticipated by Petrovic;
`
`(2) Claim 5 as obvious over Petrovic in view of Raith and Alakija;
`
`(3) Claims 1-5 as anticipated by Cimini; and
`
`(4) Claim 5 as obvious over Cimini, Raith, and Alakija.
`
`
`
`3
`
`

`

`
`
`The ‘891 Patent, entitled “Multicarrier Techniques
`
`in Bandlimited
`
`Channels,” was filed on June 7, 1995 and issued on August 19, 1997.
`
`The ‘891 Patent describes and claims methods for multicarrier modulation
`
`using co-located transmitters to achieve higher transmission capacity for mobile
`
`paging and two-way digital communication in a manner consistent with FCC
`
`emission mask limits. Ex. 1001 at Abstract. One technique disclosed in the ‘891
`
`Patent is a method of operating at least two paging carriers in a single mask-
`
`defined, bandlimited channel by transmitting the carriers in a way that the
`
`frequency difference between the center frequency of the outer most carrier and the
`
`band edge of the mask defining the channel is more than half the frequency
`
`difference between the center frequencies of each adjacent carrier. See the ‘891
`
`Patent, Ex. 1001, claims 1, 3, and 5.
`
`III. PROPER CLAIM CONSTRUCTION
`
`By statute, Petitioner must identify “in writing, and with particularity, each
`
`claim challenged, the grounds on which [each] challenge … is based, and the
`
`evidence that supports the grounds . . . .” 35 U.S.C. § 312(c). This requires a
`
`precise statement on “[h]ow the challenged claim is to be construed.” 37 C.F.R. §
`
`42.104(b)(3). The Petition fails to set forth how the independent claims are to be
`
`construed. Petitioner construes only three terms. Petitioner dismisses its
`
`
`
`4
`
`

`

`
`obligations by saying, “[a]ll remaining terms should be given their plain meaning,”
`
`without articulating any such construction. Paper 7 at 4.
`
`By leaving the entire breadth of the independent claims without an
`
`articulated construction, Petitioner’s asserted grounds for unpatentability are
`
`deficient because the basis of Petitioner’s conclusion that a particular claim
`
`element or limitation is taught in the asserted references is unclear.
`
`Petitioner makes clear that it has taken this approach, because it does not
`
`want to be bound by constructions adopted in this proceeding. Petitioner points
`
`out that “[b]ecause the standards of claim interpretation applied in litigation differ
`
`from PTO proceedings, any interpretation of claim terms in this IPR is not binding
`
`upon Apple in any litigation related to the subject patent.” Paper 7 at 4 footnote 1
`
`(citing In re Zletz, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989)). Petitioner’s approach
`
`unfairly forces Patent Owner (as well as the Board) to guess at how Petitioner is
`
`construing any given term. Consequently, on its face, the Petition is deficient and
`
`fails to meet the standard for institution of review. If the Board does not
`
`summarily deny the Petition for this reason, Patent Owner respectfully submits the
`
`following proposed constructions for purposes of this proceeding only.
`
`Claim terms in an unexpired patent are given their broadest reasonable
`
`construction in light of the specification. 37 Code of Federal Regulations §
`
`42.100(b) (emphasis added). Claim terms are given their ordinary and customary
`
`
`
`5
`
`

`

`
`meaning, as would be understood by one of ordinary skill in the art in the context
`
`of the entire disclosure. Facebook, Inc. v. Evolutionary Intelligence, LLC,
`
`IPR2014-00093, Paper 12 (P.T.A.B. Apr. 28, 2014) (Decision Denying Institution
`
`of Inter Partes Review), at p. 7 (internal citations omitted).
`
`Petitioner acknowledges this rule in passing, yet relies mostly on the claim
`
`construction order from Mobile Telecommunications Technologies, LLC v. Apple
`
`Inc., Civil Action No. 2:13-cv-258-JRG-RSP (E.D. Tex.) (“Apple Markman
`
`Order”) for constructions 1 and 3; and relies mostly on the claim construction order
`
`from Mobile Telecommunications Technologies, LLC v. Clearwire Corp., Civil
`
`Action No. 2:12-CF-308 (E.D. Tex.) (“Clearwire Markman Order”) for
`
`construction 2.
`
`Markman Orders are irrelevant here because they are based on the litigation
`
`positions of the parties. “Litigation positions taken subsequent to issuance of the
`
`patent are unreliable.” IPR2012-00001 Paper 15 at 7. To the extent Petitioner’s
`
`claim constructions 1-3 are based on a Markman Order, they should be excluded.
`
`A. Construction of Independent Claim Terms
`
`1.
`
`“single mask-defined, bandlimited channel”
`
`Challenged claims 1, 3, and 5 recite a “single mask-defined, bandlimited
`
`channel.” Here, a “single mask-defined, bandlimited channel” means a “channel
`
`whose bandwidth is further limited by a single emission mask.”
`
`
`
`6
`
`

`

`
`
`One of ordinary skill
`
`in
`
`the art understands
`
`that a channel
`
`in
`
`telecommunications “has a certain capacity for transmitting information, often
`
`measured by its bandwidth in Hz or its data rate in bits per second.”
`
`http://en.wikipedia.org/wiki/Channel_(communications). So, it is understood that
`
`by definition a channel has a bandwidth.
`
`The plain and ordinary meaning of
`
`the
`
`term “bandlimited”
`
`in
`
`telecommunications is a band or bandwidth that is limited in some way. A
`
`bandlimited channel, therefore, is a channel whose bandwidth is further limited. A
`
`mask in telecommunications mask is known by one of skill in the art to be an
`
`emission mask. Because the bandlimited channel is defined by a single emission
`
`mask and the channel already has a bandwidth, the emission mask must further
`
`limit the bandwidth of the channel. The specification also supports this
`
`construction.
`
`The ‘891 Patent describes and claims methods for “multicarrier modulation
`
`… consistent with FCC emission mask limits.” Ex. 1001 at Abstract. Further, as
`
`shown below, the ‘891 Patent provides that carriers operating at different
`
`frequencies are fit within a single bandwidth allocation consistent with FCC mask
`
`requirements.
`
`
`
`7
`
`

`

`
`
`Id. at 5:11-19 (emphasis added).
`
`2.
`
`“band edge”
`
`
`
`Challenged claims 1, 3, and 5 recite a “band edge.” Here, a “band edge”
`
`means “edge of the single emission mask.”
`
`There is no antecedent basis for “the band edge.” However, the claims recite
`
`“the band edge of the mask defining said channel.” The antecedent basis of “the
`
`mask” is the single mask. The antecedent basis of “said channel” is the
`
`bandlimited channel. So, the band edge is the edge of the single emission mask
`
`defining the bandlimited channel.
`
`3.
`
`“operating” of claims 1, 3, and 5
`
`Challenged claims 1, 3, and 5 recite a method of “operating.” The word
`
`“operate” means “to function or behave in a proper or particular way.” See
`
`www.merriam-webster.com/dictionary/operate. Consequently, “operating” means
`
`“when functioning,” or “during the operation of.” This construction reflects the
`
`
`
`8
`
`

`

`
`plain and ordinary meaning of the words and is supported by the specification. See
`
`e.g., Ex. 1001 at 1:49; 2:3-4: 2:29; 2:38; 2:48; 4:29.
`
`In summary, “operating” means “functioning or behaving in a proper or
`
`particular way.”
`
`4.
`
`“each adjacent carrier” of claims 1, 3, and 5
`
`Challenged claims 1, 3, and 5 recite “frequency difference between [] is
`
`[more] than half the frequency difference between the center frequencies of each
`
`adjacent carrier.” The word “each” means “every one of two or more [] things
`
`considered separately.” See www.merriam-webster.com/dictionary/each. The
`
`word “adjacent” means “having a common endpoint or border.”
`
` See
`
`www.merriam-webster.com/dictionary/adjacent. Thus, “each adjacent carrier”
`
`means “every single carrier, two of which having a common endpoint or border.”
`
`This construction reflects the plain and ordinary meaning of the words and is
`
`supported by the specification. See e.g., Ex. 1001 at 2:36: 2:46; 4:30-35
`
`(reproduced below).
`
`In summary, “each adjacent carrier” means “every single carrier, two of
`
`
`
`which having a common endpoint or border.”
`
`
`
`9
`
`

`

`
`
`From constructions 1-4, a method for “operating” at least two carriers in a
`
`bandlimited channel so that the frequency difference between the center frequency
`
`of the outer most carriers and the band edge of the mask defining the bandlimited
`
`channel is “[more] than half the frequency difference between the center
`
`frequencies of each adjacent carrier,” of claims 1, 3, and 5 means “when
`
`functioning, the carriers are transmitted in a bandlimited channel in such a way [as
`
`defined in the claims] that the frequency difference between the center frequency
`
`of the outer most carriers and the band edge of the mask that further limits the
`
`bandwidth of bandlimited channel is more than half the frequency difference
`
`between the center frequencies of every single carrier, two of which having a
`
`common endpoint or border.”
`
`IV. REFERENCES RELIED UPON BY PETITIONER
`
`A.
`
`Petrovic
`
`Petrovic is directed to a multicarrier permutation modulation technique that
`
`can be used in simulcast networks with high power transmitters. Ex. 1008 at
`
`Abstract. Reference is made to previous current paging systems. The bandwidth
`
`of these systems is described as being 25 kHz.
`
`
`
`10
`
`

`

`
`
`Id. col. 1, ¶2 at 1 (emphasis added).
`
`Petrovic then proposes doubling the channel bandwidth as described below.
`
`
`
`
`
`Id. col. 2, ¶3 at 1 (emphasis added).
`
`The bandwidth is doubled by moving the current emission mask boundaries
`
`away from the center frequency by ±12.5 kHz. In other words, the current
`
`emission mask boundaries, presumably ±12.5 kHz, are moved another ±12.5 kHz
`
`for new total bandwidth of 50 kHz. The additional ±12.5 kHz on either side also
`
`includes ±7.5 kHz of guard bands.
`
`Annotation 2 of FIG. 1, shown below depicts the channel bandwidth of
`
`
`
`11
`
`

`

`
`Petrovic. Note that the frequencies in FIG. 1 are not drawn to scale.
`
`
`
`The technique disclosed by Petrovic involves “eight subcarriers spaced 5
`
`kHz apart, so that there is exactly 35 kHz spacing between end subcarriers.” Id.
`
`col. 2, ¶4 at 1. However, Petrovic specifically discloses that “we propose that
`
`during each symbol interval a combination of four distinct carriers is ON, while
`
`other four are OFF.” Id. (reproduced below).
`
`
`
`12
`
`

`

`
`
`
`
`In other words, when functioning, only four carriers are turned “ON,” while
`
`the other four carriers are turned “OFF.” This point is also shown above in
`
`Annotation 2 of FIG. 1, where only four carriers are shown within the 50 kHz
`
`channel bandwidth.
`
`Further, Petrovic provides in the passage below that only 4 carriers can be
`
`transmitted from any one location. Petrovic describes two transmitters in different
`
`locations. Each transmitter has four transmitters capable of transmitting a subset of
`
`the 8 carrier frequencies.
`
`Id. col. 1, ¶6 at 2 (emphasis added).
`
`As a result, Petrovic discloses eight subcarriers. However, only four are
`
`operating at any one time, and only four can be from a single location.
`
`
`
`
`
`13
`
`

`

`
`
`B.
`
`Raith
`
`Raith is directed to a cellular digital mobile radio system that includes base
`
`stations and mobile stations with transmitters and receivers. Ex. 1010 at Abstract.
`
`Since Petitioner acknowledges, in Paper 7 at 27, that Petrovic “does not
`
`explicitly disclose co-location,” Petitioner relies, in Paper 7 at 27-32, on Raith for
`
`co-location of a plurality of transmitters.
`
`In other words, Raith is not relied in the Petition as disclosing a single mask-
`
`defined, bandlimited channel or a method for “operating” at least two carriers so
`
`that the frequency difference between the center frequency of the outer most
`
`carriers and the band edge of a mask defining a channel is “[more] than half the
`
`frequency difference between the center frequencies of each adjacent carrier,” as
`
`recited in claim 5 of the ‘891 Patent.
`
`C. Alakija
`
`Alakija is directed to a mobile communications base station antenna that
`
`utilizes a cylindrical array design. Ex. 1011 at Abstract.
`
`Since Petitioner acknowledges, in Paper 7 at 32, that Petrovic in view of
`
`Raith “does not explicitly describe emanating a plurality of carriers from the same
`
`transmission source,” Petitioner relies, in Paper 7 at 32--35, on Alakija for
`
`emanating a plurality of carriers from the same transmission source.
`
`
`
`14
`
`

`

`
`
`In other words, Alakija is not relied in the Petition as disclosing a single
`
`mask-defined, bandlimited channel or a method for “operating” at least two
`
`carriers so that the frequency difference between the center frequency of the outer
`
`most carriers and the band edge of a mask defining a channel is “[more] than half
`
`the frequency difference between the center frequencies of each adjacent carrier,”
`
`as recited in claim 5 of the ‘891 Patent.
`
`D. Cimini
`
`Cimini is directed to a technique for combating the effects of multipath
`
`propagation and cochannel interference on a narrow-band digital mobile channel.
`
`Ex. 1009 at Abstract.
`
`Cimini is silent with regard to an emission mask. Cimini describes the
`
`operation of the data setup used in simulation in Fig. 10. Id. col. 1 ¶ 3 at 9,
`
`(reproduced below):
`
`Annotation 3 of Fig. 10, shown below, is illustrative of the operation of
`
`subcarriers in the simulation of Cimini. The 7.5 kHz channel includes 5 kHz for
`
`
`
`
`
`15
`
`

`

`
`data transmission. The 5 kHz is broken up into three groups of data subcarriers:
`
`Subcarrier Group 1, Subcarrier Group 2, and Subcarrier Group 3. Subcarriers
`
`within each group are separated by 58.59 Hz, so there are 86 subcarriers spread
`
`across the 5 kHz allocated for data transmission. The bandwidth also includes two
`
`groups of pilot signals separating the subcarrier groups and two guard bands at
`
`each end of the bandwidth.
`
`Guard
`Band
`
`Subcarrier 
`Group 1
`
`Pilots
`
`Subcarrier 
`Group 2
`
`Pilots
`
`Subcarrier 
`Group 3
`
`Guard
`Band
`
`
`
`Cimini discloses the need to limit adjacent channel interference. Cimini
`
`describes that “[t]his is accomplished by leaving 250 Hz gaps at each end of the
`
`band.” Id. col. 2 ¶ 1 at 8.
`
`V. GROUND 1 – CLAIMS 1-5 ARE NOT ANTICIPATED BY PETROVIC.
`
`A.
`
`Petrovic does not anticipate claims 1, 3, and 5.
`
`The CAFC has held that a proponent of anticipation must show “that the
`
`four corners of a single prior art document describe every element of the claimed
`
`invention.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir.
`
`
`
`16
`
`

`

`
`2008) (citing Xerox Corp. v. 3Com Corp., 458 F.3d 1310, 1322 (Fed. Cir. 2006),
`
`citing Advanced Display Sys. Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed.
`
`Cir. 2000).
`
`Patent Owner submits that Petrovic does not teach, at least, the following
`
`elements of claims 1, 3 and 5 of the ‘891 Patent: (i) “a single mask-defined,
`
`bandlimited channel;” (ii) “operating or transmitting said carriers… such that the
`
`frequency difference between the center frequency of the outer most of said
`
`carriers and the band edge of the mask … is more than half the frequency
`
`difference between the center frequencies of each adjacent carrier;” and (iii)
`
`“operating or transmitting said carriers from the same location.”
`
`Claim 1 is directed to a method of operating a plurality of paging carriers in
`
`a single mask-defined, bandlimited channel. Claim 3 is directed to a method of
`
`operating at least two paging carriers each in a corresponding subchannel of a
`
`single mask-defined, bandlimited channel. Claim 5 is directed to a system having
`
`a plurality of transmitters transmitting a plurality of modulated carriers over a
`
`single mask-defined, bandlimited channel.
`
`Claims 1, 3 and 5 all recite a (i) “single mask-defined, bandlimited channel,”
`
`(ii) “operating or transmitting said carriers… such that the frequency difference
`
`between the center frequency of the outer most of said carriers and the band edge
`
`of the mask … is more than half the frequency difference between the center
`
`
`
`17
`
`

`

`
`frequencies of each adjacent carrier,” and (iii) “operating or transmitting said
`
`carriers from the same location.”
`
`Above Patent Owner construes a “single mask-defined, bandlimited
`
`channel” as a “channel whose bandwidth is further limited by a single emission
`
`mask.” Petitioner construes “a single mask-defined, bandlimited channel” broadly
`
`enough to encompass “a channel confined to a frequency range.” Paper 7 at 4.
`
`Petitioner further states that “[t]his is the construction upon which both parties
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`agreed in the Apple litigation,” and then cites a Markman Order. Id.
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`Markman Orders are irrelevant here, because they are based on the litigation
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`positions of the parties. The Board has previously found that “[l]itigation positions
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`taken subsequent to issuance of the patent are unreliable.” IPR2012-00001 Paper
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`15 at 7. To the extent that Petitioner’s claim construction is based on a Markman
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`Order, it should be excluded.
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`Petitioner also says that the specification of the ‘891 Patent supports its
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`construction. Petitioner asserts that “the ‘bandlimit’ and ‘mask’ that define the
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`mobile paging channel described in the ‘891 patent simply refer to a ‘standard’
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`range of frequencies that meet certain FCC requirements for mobile paging
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`channels. Accordingly, one of ordinary skill in the art would have understood a
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`‘single mask-defined, bandlimited channel’ to be a channel confined to a frequency
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`18
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`range (e.g., the ‘Narrowband Personal Communications Service’ frequency range
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`defined by the FCC).” Id. at 5.
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`Patent owner construes the “band edge” as the “edge of the single emission
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`mask.” Since the Petition does not set forth any contrary construction, Patent
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`Owner’s proposed constructions are unchallenged or undisputed by Petitioner.
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`Patent owner construes “operating” as “to functioning or behaving in a
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`proper or particular way.” Since the Petition does not set forth any contrary
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`construction, Patent Owner’s proposed constructions are unchallenged or
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`undisputed by Petitioner.
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`Patent owner construes “each adjacent carrier” as “every single carrier, two
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`of which having a common endpoint or border.” Since the Petition does not set
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`forth any contrary construction, Patent Owner’s proposed constructions are
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`unchallenged or undisputed by Petitioner.
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`Petitioner asserts that Petrovic “describes the use of a mask to define a
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`bandlimited channel” in the description of the emission mask boundaries, shown
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`below. Paper 7 at 17.
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`19
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`
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`Ex. 1008 col. 2, ¶3 at 1 (emphasis added).
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`Petitioner provides that “Petrovic describes a bandlimit (i.e., a pass band of
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`the channel) of 35 kHz.” Paper 7 at 17. So, Petitioner is equating the 35 kHz pass
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`band of Petrovic to the “single mask-defined, bandlimited channel” of claims 1, 3,
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`and 5 of the ‘891 Patent. Id.
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`Petitioner also asserts that the following passage in combination with the
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`above passage from Petrovic also discloses “operating or transmitting said
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`carriers… such that the frequency difference between the center frequency of the
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`outer most of said carriers and the band edge of the mask … is more than half the
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`frequency difference between the center frequencies of each adjacent carrier,” as
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`recited in claims 1, 3, and 5.
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`20
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`Ex. 1008 col. 2, ¶4 at 1.
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`“Petrovic describes a transmitter that transmits data over eight subcarriers.”
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`Id. “[E]ach carrier is centrally located within evenly spaced subchannels such that
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`the center frequency of each carrier is 5 kHz apart.” Paper 7 at 18. “In other
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`words, there is 5 kHz between the center frequencies of each adjacent carrier and
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`7.5 kHz between the center frequency of the outer most of said carriers and the
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`band edge of the mask defining the channel. 7.5 is more than half of 5.” Id. at 19.
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`Therefore, Petitioner’s assertion is that the subcarriers are transmitted such
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`that the frequency difference between the center frequency of the outer most of
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`said carriers and the band edge of the mask … is more than half the frequency
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`difference between the center frequencies of each adjacent carrier. Petitioner’s
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`assertion is best understood in reference to Annotation 2 of FIG. 1, which
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`reproduced again below.
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`Petitioner describes that the distance between Subcarrier 1 and Subcarrier 2
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`is 5 kHz, and the distance between Subcarrier 1 and the 50 kHz bandwidth
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`boundary is 7.5 kHz, for example. Since 7.5 kHz is more than 5 kHz / 2, or 2.5
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`kHz, Petitioner asserts that Petrovic meets the transmission condition of the claims.
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`
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`21
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`Further, Petitioner asserts that “Petrovic describes a transmitter that
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`transmits data over eight subcarriers via a single antenna (i.e., the “same
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`location”).” Id. at 17. However, later Petitioner admits that Petrovic does not
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`disclose transmitting from the same location. “Petrovic discloses a plurality of
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`transmitters, but does not explicitly disclose co-location. Rather, under such a
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`construction, the particular implementation disclosed by Petrovic locates two
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`transmitters seven miles apart.” Id. at 28.
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`Patent Owner submits that Petrovic does not disclose claims 1, 3, and 5 of
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`the ‘891 Patent for at least three reasons. First, Petrovic does not disclose a single
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`22
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`mask-defined, bandlimited channel, because Petrovic’s mask does not further limit
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`the channel bandwidth. Second, Petrovic does not disclose the transmission
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`condition of the claims, because Petrovic’s band edge does not meet the
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`transmission condition, and the difference between the center frequencies of each
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`adjacent carrier varies under operating conditions. Third, Petitioner admits
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`Petrovic does not disclose operating or transmitting all of the carriers from the
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`same location.
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`First, in regard to the limitation of a single mask-defined, bandlimited
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`channel, Petitioner makes two contradictory assertions. In the first assertion,
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`Petitioner equates the 35 kHz pass band of Petrovic to the “single mask-defined,
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`bandlimited channel” of claims 1, 3, and 5. Petitioner provides that “Petrovic
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`describes a bandlimit (i.e., a pass band of the channel) of 35 kHz.” Paper 7 at 17.
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`The problem with this assertion is that if the 35 kHz pass band of Petrovic is
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`the single mask-defined, bandlimited channel, the transmission condition of the
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`claims is not met. Essentially, the center frequency of an outer most carrier can be
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`on the band edge, so there is no difference between the center frequency of an
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`outer most carrier and the band edge as required by the claims. Referring to
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`Annotation 2 of FIG. 1, shown above, if the 35 kHz pass band of Petrovic is the
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`single mask-defined, bandlimited channel, then Subcarrier 1 is on the band edge,
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`
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`23
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`so there is no difference between the center frequency of an outer most carrier and
`
`the band edge as required by the claims.
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`In the second assertion, Petitioner equates the 50 kHz bandwidth of the
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`channel of Petrovic to the “single mask-defined, bandlimited channel.” Petitioner
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`provides that “there is 5 kHz between the center frequencies of each adjacent
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`carrier and 7.5 kHz between the center frequency of the outer most of said carriers
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`and the band edge of the mask defining the channel. 7.5 is more than half of 5.”
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`Id. at 19. Essentially, Petitioner finds that the single mask-defined, bandlimited
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`channel is the 35 kH