Attorney Docket No. 39521-0005IP1
`IPR of U.S. Patent No. 5,915,210
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Patent of: Cameron et al.
`U.S. Patent No.: 5,915,210 Attorney Docket No.: 39521-0005IP1
`Issue Date:
`Jun. 22, 1999
`Appl. Serial No.: 08/899,476
`Filing Date:
`Jul. 24, 1997
`Title:
`METHOD AND SYSTEM FOR PROVIDING MULTICARRIER SIMUL-
`CAST TRANSMISSION
`
`
`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. 5,915,210
`PURSUANT TO 35 U.S.C. §§ 311–319, 37 C.F.R. § 42
`
`i
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`

`

`
`
`I.
`
`II.
`
`III.
`
`IV.
`
`V.
`
`Attorney Docket No. 39521-0005IP1
`IPR of U.S. Patent No. 5,915,210
`
`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 ......................... 2
`
`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) ......................................... 4
`“a . . . transmitter” (Claims 1 and 10) ................................................................... 5
`“means for transmitting a first plurality of carrier signals…” (Claim 19) ................ 6
`“means for transmitting a second plurality of carrier signals…” (Claim 19) .......... 9
`“transmit[ting]…in simulcast” (Claims 1, 10 and 19) .......................................... 11
`
`1.
`2.
`3.
`4.
`
`SUMMARY OF THE ‘210 PATENT ......................................................................... 12
`A. Brief Description ............................................................................................... 12
`B. Summary of the Prosecution History of the ’210 Patent ................................... 12
`
`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 ‘210 PATENT IS UNPATENTABLE ..................... 14
`A.
`[GROUND 1] – Saalfrank Anticipates Claims 1 and 10 .................................... 14
`1.
`Claim 1 ................................................................................................... 19
`2.
`Claim 10 ................................................................................................. 22
`[GROUND 2] – Saalfrank in view of Nakamura Renders Claim 19 Obvious ..... 27
`[GROUND 3] – Witsaman in view of Bingham Render Claims 1, 10, and 19
`Obvious ............................................................................................................ 34
`1.
`Claim 1 ................................................................................................... 40
`2.
`Claim 10 ................................................................................................. 45
`3.
`Claim 19 ................................................................................................. 54
`
`B.
`C.
`
`VI.
`
`REDUNDACY .......................................................................................................... 58
`
`VII. CONCLUSION ......................................................................................................... 59
`
`
`
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`Attorney Docket No. 39521-0005IP1
`IPR of U.S. Patent No. 5,915,210
`
`EXHIBITS
`
`APPLE-1001
`
`U.S. Patent No. 5,915,210 to Cameron et al. (“the ‘210 patent”)
`
`APPLE-1002
`
`Excerpts from the Prosecution History of the ‘210 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
`
`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.) (“Plaintiff’s Opening Brief”)
`
`Claim Construction Order from Mobile Telecommunications Technolo-
`gies, LLC v. Apple Inc., Civil Action No. 2:13-cv-258-JRG-RSP (E.D.
`Tex.) (“Markman Order”)
`
`Claim Construction Order from Mobile Telecommunications Technolo-
`gies, LLC v. Clearwire Corp., Civil Action No. 2:12-cv-308-JRG-RSP
`(E.D. Tex.) (“Clearwire Order”)
`
`APPLE-1008
`
`English Translation of German Patent Publication No. DE4102408 to
`Saalfrank (“Saalfrank”)
`
`APPLE-1009
`
`Yasuhisa Nakamura et al., 256 QAM Modem for Multicarrier 400
`Mbit/s Digital Radio, 5 IEEE Journal on Selected Areas in Communica-
`tions 329 (Apr. 1987) (“Nakamura”)
`
`APPLE-1010
`
`U.S. Patent No. 5,365,569 to Witsaman et al. (“Witsaman”)
`
`APPLE-1011
`
`John A. C. Bingham, Multicarrier Modulation for Data Transmission:
`An Idea Whose Time Has Come, 28 IEEE Communications Magazine
`5 (May 1990) (“Bingham”)
`
`ii
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`Attorney Docket No. 39521-0005IP1
`IPR of U.S. Patent No. 5,915,210
`
`APPLE-1012
`
`Bernard Le Floch et al., Digital Sound Broadcasting to Mobile Receiv-
`ers, 35 IEEE Transactions on Consumer Electronics 493 (Aug. 1989)
`(“Le Floch”)
`
`APPLE-1013
`
`Certificate of Translation of German Patent Publication No.
`DE4102408 to Saalfrank
`
`APPLE-1014
`
`U.S. Patent No. 5,381,449 to Jasper et al.
`
`APPLE-1015
`
`U.S. Patent No. 5,544,198 to Saalfrank
`
`APPLE-1016
`
`John D. Oetting, A Comparison of Modulation Techniques for Digital
`Radio, 27 IEEE Transactions on Communications 1752 (Dec. 1979)
`
`APPLE-1017
`
`U.S. Patent No. 5,168,509 to Nakamura et al.
`
`APPLE-1018
`
`German Patent Publication No. DE4102408 to Saalfrank
`
`
`
`iii
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`

`

`Attorney Docket No. 39521-0005IP1
`IPR of U.S. Patent No. 5,915,210
`
`
`
`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, 10 and 19 (“the Challenged Claims”) of
`
`U.S. Patent No. 5,915,210 (“the ‘210 patent”). As explained in this petition, there exists a
`
`reasonable likelihood that Apple will prevail with respect to at least one of the Challenged
`
`Claims. Apple respectfully submits that an IPR should be instituted, and that the Chal-
`
`lenged Claims should be canceled as unpatentable.
`
`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 ‘210 Patent. The ‘210 Patent
`
`is presently involved in five pending litigations (the Litigations), one of which names Apple
`
`as a defendant: Mobile Telecommunications Technologies, LLC v. Sprint Nextel Corp.,
`
`Case No. 2:12-CV-832 (E.D. Tex.); Mobile Telecommunications Technologies, LLC v. Apple
`
`Inc., Case No. 2:13-CV-258 (E.D. Tex.) (hereinafter “the Apple litigation”); Mobile Telecom-
`
`munications Technologies, LLC v. Leap Wireless International, Inc., Case No. 2-13-CV-885
`
`(E.D. Tex.); Mobile Telecommunications Technologies, LLC v. T-Mobile USA, Inc., Case
`
`No. 2-13-CV-886 (E.D. Tex.); and Mobile Telecommunications Technologies, LLC v. Sam-
`
`sung Telecommunications America, LLC, Case No. 2:13-CV-259 (E.D. Tex.).
`
`
`
`
`
`1
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`Attorney Docket No. 39521-0005IP1
`IPR of U.S. Patent No. 5,915,210
`
`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 IPR39521-0005IP1@fr.com.
`
`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 ‘210 Patent is eligible for IPR. The present petition is being
`
`filed within one year of when Apple’s waiver of service was filed in Case No. 2:13-CV-258,
`
`which took place on June 27, 2013. See Ex. 1003, p. 9; see also Macauto U.S.A. v. BOS
`
`GMBH & KG (IPR2012-00004), Paper No. 18 at 16 (P.T.A.B. Jan. 24, 2013) (establishing
`
`that the date on which a waiver of service is filed with the court tolls the one-year bar under
`
`35 U.S.C. § 315(b)).
`
`B.
`
`Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested
`
`Apple requests an IPR of the Challenged Claims on the grounds set forth in the table
`
`shown below, and requests that each of the Challenged Claims be found unpatentable. An
`
`2
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`

`

`Attorney Docket No. 39521-0005IP1
`IPR of U.S. Patent No. 5,915,210
`
`explanation of how these Challenged Claims are unpatentable under the statutory grounds
`
`identified below is provided in the form of detailed description and claim charts that follow,
`
`indicating where each element can be found in the cited prior art, and the relevance of that
`
`prior art. Additional explanation and support for each ground of rejection is set forth in Ex-
`
`hibit APPLE-1004, the Declaration of Dr. Apostolos Kakaes (“Kakaes Declaration”), refer-
`
`enced throughout this Petition.
`
`Ground
`
`‘210 Patent Claims
`
`Basis for Rejection
`
`Ground 1
`
`1 and 10
`
`§ 102 based on Saalfrank
`
`Ground 2
`
`19
`
`§ 103 based on Saalfrank in view of Nakamura
`
`Ground 3
`
`1, 10, and 19
`
`§ 103 based on Witsaman in view of Bingham
`
`
`
`The ‘210 patent issued from an application filed on July 24, 1997. The ‘210 patent is
`
`a continuation of and claims priority to U.S. Application No. 08/760,457, filed on December
`
`6, 1996, which is a continuation of U.S. Application No. 07/973,918 (now U.S. Patent No.
`
`5,590,403), filed on November 12, 1992.
`
`Saalfrank qualifies as prior art under 35 U.S.C § 102(a). Specifically, Saalfrank was
`
`published on August 6, 1992, which is earlier that the earliest possible priority date to which
`
`the ‘210 patent could be entitled: November 12, 1992. Saalfrank has never before been
`
`considered by the Patent Office with regard to the patentability of the ‘210 patent.
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`Attorney Docket No. 39521-0005IP1
`IPR of U.S. Patent No. 5,915,210
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`Nakamura qualifies as prior art under 35 U.S.C § 102(b). Specifically, Nakamura
`
`was published in April, 1987, which is more than a year before the earliest possible priority
`
`date to which the ‘210 patent could be entitled: November 12, 1992. Nakamura has never
`
`before been considered by the Patent Office with regard to the patentability of the ‘210 pa-
`
`tent.
`
`Witsaman qualifies as prior art under 35 U.S.C § 102(e). Specifically, Witsaman was
`
`filed on August 17, 1992, which is earlier than the earliest possible priority date to which the
`
`‘210 patent could be entitled: November 12, 1992. Witsaman has never before been con-
`
`sidered by the Patent Office with regard to the patentability of the ‘210 patent.
`
`Bingham qualifies as prior art under 35 U.S.C § 102(b). Specifically, Bingham was
`
`published in May, 1990, which is more than a year before than the earliest possible priority
`
`date to which the ‘210 patent could be entitled: November 12, 1992. Bingham has never
`
`before been considered by the Patent Office with regard to the patentability of the ‘210 pa-
`
`tent.
`
`C.
`
`Claim Construction under 37 C.F.R. §§ 42.104(b)(3)
`
`
`
`The Board’s review of the claims of an expired patent is similar to that of a district
`
`court’s review. In re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012). The principle set forth
`
`by the court in Phillips v. AWH Corp., 415 F.3d 1303, 1312, 1327 (Fed. Cir. 2005) (words of
`
`a claim “are generally given their ordinary and customary meaning” as understood by a per-
`
`son of ordinary skill in the art in question at the time of the invention, construing to preserve
`
`4
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`

`

`validity in case of ambiguity) should be applied since the expired claims are not subject to
`
`Attorney Docket No. 39521-0005IP1
`IPR of U.S. Patent No. 5,915,210
`
`amendment.
`
`Under the principles set forth in Phillips, the following claim terms should be con-
`
`strued as set forth below.
`
`1.
`
`“a . . . transmitter” (Claims 1 and 10)
`
`For purposes of this Petition, the term “a . . . transmitter” is construed by its plain and
`
`ordinary meaning, with the understanding that transmitting multiple signals or outputs from a
`
`single structural unit cannot suffice as multiple transmitters. This construction mimics con-
`
`structions resolved through Markman proceedings conducted in co-pending litigation, as
`
`well as in related litigation. See, e.g., Ex. 1006, pp. 9-10 (“[t]he Court therefore hereby con-
`
`strues “transmitter[s]” and “base transmitter[s]” to have their plain meaning. The Court fur-
`
`ther hereby adopts the above-quoted conclusions reached in Clearwire[.]”); Ex. 1005 at p.
`
`13 (“The terms ‘transmitter[s]’ and ‘base transmitter[s]’ do not require construction and
`
`should be afforded their plain and ordinary meanings[.]”). See also Ex. 1007, p. 2 (“a per-
`
`son of ordinary skill in the art would understand the terms “transmitter” and “base transmit-
`
`ter” to refer to a structural unit, and thus, the number of transmitters in a given system or
`
`method is dependent on structure, not function....[T]he Court rejects [Plaintiff’s] implication
`
`that transmitting multiple signals or outputs from a single structural unit can suffice as multi-
`
`ple transmitters.”).
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`5
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`Attorney Docket No. 39521-0005IP1
`IPR of U.S. Patent No. 5,915,210
`
`The understanding that transmitting multiple signals or outputs from a single struc-
`
`tural unit cannot suffice as multiple transmitters is proper because, in the ‘210 Patent, a con-
`
`figuration that transmits multiple carriers is referred to as a single transmitter or base trans-
`
`mitter unit. See, e.g., Ex. 1001 at Figs. 13 and 14, 15:41-16:23.
`
`For purposes of this Petition, Apple takes no position as to whether the term “trans-
`
`mitter” should be construed to encompass the proposition that a “transmitter” must be spa-
`
`tially separated or geographically dispersed from other transmitters. Apple submits that, re-
`
`gardless of whether this proposition is adopted, the Challenged Claims are anticipated, and
`
`therefore unpatentable.
`
`2.
`
`“means for transmitting a first plurality of carrier sig-
`nals…” (Claim 19)
`
`Claim 19 recites “means for transmitting a first plurality of carrier signals within the
`
`desired frequency band, each of the first plurality of carrier signals representing a portion of
`
`the information signal substantially not represented by others of the first plurality of carrier
`
`signals.” During original prosecution, the Applicant made clear its intention to invoke 35
`
`U.S.C. 112, sixth paragraph through recitation of this means-plus language. Specifically,
`
`Applicant admitted that this language uses “means-plus-function recitations,” contrasting the
`
`limitation with “structural recitations” of issued claim 1. See Ex. 1002, p. 278.
`
`Under 35 U.S.C. 112, sixth paragraph, a claim that employs means-plus-function
`
`language is construed to cover the structure, material, or acts described in the specification
`
`and equivalents thereof corresponding to the recited function. See 35 U.S.C. § 112. In oth-
`
`6
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`

`

`Attorney Docket No. 39521-0005IP1
`IPR of U.S. Patent No. 5,915,210
`
`er proceedings, Patent Owner has represented that the recited function for the feature of the
`
`“means for transmitting a first plurality of carrier signals…” is “transmitting a first plurality of
`
`carrier signals within the desired frequency band, each of the first plurality of carrier signals
`
`representing a portion of the information signal substantially not represented by others of
`
`the first plurality of carrier signals.” Ex. 1006, pp. 25-26.
`
`In evaluating the structure corresponding to this function, FIGS. 13 and 14 of the
`
`‘210 patent and their description at column 13, lines 3 to 5 and column 15, line 49 to column
`
`16 line 31 should be evaluated, consistent with the Apple Litigation court’s analysis. See
`
`Ex. 1006, pp. 28-30. Indeed, based on its review of the entire specification of the ‘210 pa-
`
`tent and in agreement with Apple’s proposed construction, the Court determined that “Fig-
`
`ures 13 and 14 illustrate embodiments in which all of the illustrated components are neces-
`
`sary to constitute a ‘transmitter’ and to accomplish the recited functions.” Ex .1006, p. 31
`
`(emphasis added). For purposes of this proceeding, Petitioner applies the Court’s construc-
`
`tion that the “two embodiments illustrated by Figures 13 and 14 are alternatives and should
`
`therefore be included in the . . . construction as alternative corresponding structures.”
`
`Accordingly, for purposes of this proceeding, Petitioner applies a construction of a
`
`“means for transmitting a first plurality of carrier signals…” under 35 U.S.C. 112, sixth para-
`
`graph, as corresponding to either “base transmitter 1300 including data input 1302, control
`
`logic 1304, modulators 1306-1314, combiner 1316, power amplifier 1318, and an antenna
`
`1320, as depicted in Figure 13; and equivalents thereof,” or alternatively “base transmitter
`
`7
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`

`

`1400 including data input 1402, control logic 1404, modulators 1406-1414, power amplifiers
`
`1416-1424, combiner 1426, and an antenna 1428, as depicted in Figure 14; and equivalents
`
`Attorney Docket No. 39521-0005IP1
`IPR of U.S. Patent No. 5,915,210
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`thereof.”
`
`Notably, the Patent Owner advanced two counterarguments during the Apple Litiga-
`
`tion. Without acquiescing to either, but instead pointing out that each was fully considered
`
`and squarely rejected, Petitioner notes that neither of these counterarguments would un-
`
`dermine the application of the prior art set forth in this petition. First, the Patent Owner ar-
`
`gued that the “means for transmitting” claim language does not invoke 35 U.S.C. 112, sixth
`
`paragraph. As described above, this argument contradicts the Applicants own statements
`
`on the record during original prosecution that the language of claim 19 is a “means-plus-
`
`function” recitation. See Ex. 1002, p. 278. However, to the extent that the Board agrees
`
`that the claim language does not require the structure from the specification per 35 U.S.C.
`
`112, sixth paragraph, the prior art would meet this interpretation of claim 19 using an appli-
`
`cation of the prior art similar to the application used for the language of claims 1 and 10,
`
`which each recite the same functionality without means-plus-function.
`
`Second, the Patent Owner argued that the structure associated with the recited func-
`
`tion is simply a generic “transmitter.” See Ex. 1006, pp. 25-26. Yet, in direct contradiction,
`
`the court in the Apple Litigation found that the specific element of the transmitter shown in
`
`FIGS. 13 and 14 are required to meet the functionality recited in claim 19. Moreover, even if
`
`the Board agrees with that a generic transmitter is the structure corresponding to the func-
`
`8
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`Attorney Docket No. 39521-0005IP1
`IPR of U.S. Patent No. 5,915,210
`
`tionality of the means-plus function limitation, the prior art would meet this structure using an
`
`application of the prior art similar to the application used for the language of claims 1 and
`
`10, which recite “a first transmitter” and “a second transmitter.”
`
`3.
`
`“means for transmitting a second plurality of carrier sig-
`nals…” (Claim 19)
`
`Claim 19 recites “means for transmitting a second plurality of carrier signals in simul-
`
`cast with the first plurality of carrier signals, each of the second plurality of carrier signals
`
`corresponding to and representing substantially the same information as a respective carrier
`
`signal of the first plurality of carrier signals.” During original prosecution, the Applicant
`
`made clear its intention to invoke 35 U.S.C. 112, sixth paragraph through recitation of this
`
`means-plus language. Specifically, Applicant admitted that this language uses “means-
`
`plus-function recitations,” contrasting the limitation with “structural recitations” of issued
`
`claim 1. See Ex. 1002, p. 278.
`
`Under 35 U.S.C. 112, sixth paragraph, a claim that employs means-plus-function
`
`language is construed to cover the structure, material, or acts described in the specification
`
`and equivalents thereof corresponding to the recited function. See 35 U.S.C. § 112. In oth-
`
`er proceedings, Patent Owner has represented that the recited function for the feature of the
`
`“means for transmitting a second plurality of carrier signals…” is “transmitting a second plu-
`
`rality of carrier signals in simulcast with the first plurality of carrier signals, each of the se-
`
`cond plurality of carrier signals corresponding to and representing substantially the same
`
`information as a respective carrier signal of the first plurality of carrier signals.” Ex. 1006,
`
`9
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`

`

`Attorney Docket No. 39521-0005IP1
`IPR of U.S. Patent No. 5,915,210
`
`pp. 25-26.
`
`In evaluating the structure corresponding to this function, FIGS. 13 and 14 of the
`
`‘210 patent and their description at column 13, lines 3 to 5 and column 15, line 49 to column
`
`16 line 31 should be evaluated, consistent with the Apple Litigation court’s analysis. See
`
`Ex. 1006, pp. 28-30. Indeed, based on its review of the entire specification of the ‘210 pa-
`
`tent and in agreement with Apple’s proposed construction, the Court determined that “Fig-
`
`ures 13 and 14 illustrate embodiments in which all of the illustrated components are neces-
`
`sary to constitute a ‘transmitter’ and to accomplish the recited functions.” Ex .1006, p. 31
`
`(emphasis added). For purposes of this proceeding, Petitioner applies the Court’s construc-
`
`tion that the “two embodiments illustrated by Figures 13 and 14 are alternatives and should
`
`therefore be included in the . . . construction as alternative corresponding structures.”
`
`Accordingly, for purposes of this proceeding, Petitioner applies a construction of a
`
`“means for transmitting a first plurality of carrier signals…” under 35 U.S.C. 112, sixth para-
`
`graph, as corresponding to either “base transmitter 1300 including data input 1302, control
`
`logic 1304, modulators 1306-1314, combiner 1316, power amplifier 1318, and an antenna
`
`1320, as depicted in Figure 13; and equivalents thereof,” or alternatively “base transmitter
`
`1400 including data input 1402, control logic 1404, modulators 1406-1414, power amplifiers
`
`1416-1424, combiner 1426, and an antenna 1428, as depicted in Figure 14; and equivalents
`
`thereof.”
`
`Again, the Patent Owner raised the same two counterarguments to this construction
`
`10
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`Attorney Docket No. 39521-0005IP1
`IPR of U.S. Patent No. 5,915,210
`
`during litigation as those described above with regard to the “means for transmitting a first
`
`plurality of carrier signals…” feature. Without acquiescing to either, but instead pointing out
`
`that each was fully considered and squarely rejected, Petitioner notes that neither of these
`
`counterarguments would undermine the application of the prior art set forth in this petition.
`
`For the same reasons as set forth in Section (III)(C)(2), even if the Board agrees with either
`
`of these counterarguments, claim 19 is still unpatentable based on the prior art presented in
`
`this petition.
`
`4.
`
`“transmit[ting]…in simulcast” (Claims 1, 10 and 19)
`
`For purposes of this Petition, each of the terms “transmit...in simulcast” and “trans-
`
`mitting...in simulcast” is to be construed to read on “transmitting the same information at the
`
`same time,” with the understanding that a single transmitter cannot operate in simulcast with
`
`itself by using multi-carrier modulation. These constructions mimic constructions resolved
`
`through Markman proceedings conducted in co-pending litigation, and they are harmonious
`
`with constructions offered by Patentee during those proceedings. See, e.g., Ex. 1006, pp.
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`15-16 (“The Court therefore hereby construes ‘transmit...in simulcast,’ ‘transmitted...in sim-
`
`ulcast,’ and ‘transmitting...in simulcast’ to mean ‘transmitting the same information at the
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`same time.’ The Court further hereby adopts the above-quoted conclusion reached in
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`Clearwire[.]”)
`
`
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`11
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`

`

`Attorney Docket No. 39521-0005IP1
`IPR of U.S. Patent No. 5,915,210
`
`IV.
`
`SUMMARY OF THE ‘210 PATENT
`
`A.
`
`Brief Description
`
`In general, the ‘210 patent relates to broadcasting in simulcast using multi-carrier
`
`modulation techniques. The Abstract of the ‘210 patent states:
`
`A two-way communication system for communication betw[]een a system
`
`network and a mobile unit. The system network includes a plurality of base
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`transmitters and base receivers include[d] in the network. The base transmit-
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`ters are divided into zonal assignments and broadcast in simulcast using mul-
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`ti-carrier modulation techniques. The system network controls the base
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`transmitters to broadcast in s[]imulcast during both systemwide and zone
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`boundaries to maximize information throughout [sic, throughput]. The pre-
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`ferred mobile unit in[cl]udes a noise detector circuit to prevent unwanted
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`transmissions. The system network further provides an adaptive registration
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`feature for mobile units which controls the registration operation by the mobile
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`units to maximize information throughout [sic, throughput].
`
`The ‘210 patent includes 19 claims, of which claims 1, 10 and 19 are independent.
`
`B.
`
`Summary of the Prosecution History of the ’210 Patent
`
`The ‘210 patent issued on June 22, 1999 from U.S. Patent Application No.
`
`08/480,718, which was filed on June 7, 1995 with 7 original claims, each independent. See
`
`Ex. 1002, pp. 148-154. The Applicant immediately filed a preliminary amendment cancel-
`
`ling claims 1 and 3-7 and adding claims 8-24, with claim 16 independent.
`
`Claims 2 and 8-24 were allowed on April 25, 1997 without any rejections having
`
`been raised. In allowing the claims, the Examiner stated:
`
`12
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`

`

`Attorney Docket No. 39521-0005IP1
`IPR of U.S. Patent No. 5,915,210
`
`As to claims 2 and 16, the prior art of record fails to show a multi-carrier sim-
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`ulcast transmission system comprising the first and second transmitters for
`
`simultaneously transmitting the same information signals. The system com-
`
`prises a plurality of carrier signals in each of the transmitters wherein each of
`
`the carrier signals represent a portion of the information signal not represent-
`
`ed by others of the plurality carrier signals.
`
`Ex. 1002, p. 261.
`
`The Applicant then filed a request for continued examination and preliminary
`
`amendment in which the Applicant amended each independent claim, claims 2 and 16, to
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`recite that “each of the first plurality of carrier signals representing a portion of the infor-
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`mation signal substantially not represented by others of the first plurality of carrier signals.”
`
`Ex. 1002, p. 276. The Applicant also added new independent claim 25, which, according to
`
`the Applicant, “define[ed] a multi-carrier simulcast system using means-plus-function recita-
`
`tions, rather than structural recitations as contained in independent claim 2.” Ex. 1002, p.
`
`278.
`
`On April16, 1998, the Examiner again allowed the claims without raising any rejec-
`
`tions. In allowing the claims, the Examiner simply reiterated his previous reasons for allow-
`
`ance. See Ex. 1002, p. 291.
`
`13
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`

`

`Attorney Docket No. 39521-0005IP1
`IPR of U.S. Patent No. 5,915,210
`
`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 ‘210 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, 10, and 19, as
`
`well as the other features of these claims, were known in the art and therefore establish a
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`reasonable likelihood that at least independent claims 1, 10, and 19 are unpatentable.
`
`As noted above, the Examiner found the prior art before him was lacking with regard
`
`to: a multi-carrier simulcast transmission system comprising the first and second transmit-
`
`ters for simultaneously transmitting the same information signals using a plurality of carrier
`
`signals in each of the transmitters wherein each of the carrier signals represent a portion of
`
`the information signal not represented by others of the plurality carrier signals. As fully de-
`
`scribed below, Saalfrank alone, as well as the combination of Saalfrank and Nakamura and
`
`the combination of Witsaman and Bingham, each disclose this combination of features, to-
`
`gether with the other features of the claims for which an IPR is being sought.
`
`A.
`
`[GROUND 1] – Saalfrank Anticipates Claims 1 and 10
`
`The features of claims 1 and 10 of the ‘210 patent are anticipated by Saalfrank, ren-
`
`dering each of these claims unpatentable under 35 U.S.C. § 102(a).
`
`Saalfrank describes “a procedure for use in common-wave radio broadcasting.” Ex.
`
`1008, Abstract. Specifically, Saalfrank describes a transmission network in which “com-
`
`14
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`

`Attorney Docket No. 39521-0005IP1
`IPR of U.S. Patent No. 5,915,210
`
`mon-wave radio operation of transmitter stations participat[e] within the scope of a nation-
`
`wide radio program.” Ex. 1008, col. 1, ¶ 4. In each region of such a network, “all transmitter
`
`stations simultaneously emit transmission signals with the same modulation content on the
`
`very same transmission frequency and/or the same carrier frequencies.” Id.
`
`In the implementation described by Saalfrank, a “COFDM-method (Coded Orthogo-
`
`nal Frequency Division Multiplex) is provided as the transmission procedure, by which within
`
`a region, e.g., the transmission area of a statewide radio station, utilizing a carrier frequency
`
`– bandwidth of e.g., 1.5 MHz, simultaneously approx. 5…6 stereo programs can be
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`broadcasted.” Id. (emphasis added). “Within the channel bandwidth available here a plu-
`
`rality of individual carriers (e.g., 448 carrier frequencies equidistantly spaced over the
`
`frequency axis) is impinged with a 4-DPSK-modulation (DPSK – Differential Phase Shift
`
`Keying).” Id. (emphasis added).
`
`In general, Phase Shift Keying uses a finite number of phases of a carrier waveform
`
`to represent binary digits, also referred to as bits. See Ex. 1004, ¶ 22. In particular, each
`
`phase of the carrier represents a unique pattern of bits. See id. For example, in quadrature
`
`phase shift keying (QPSK, which is also known as 4-PSK), each phase represents two bits
`
`(i.e., ‘00’, ‘01’, ‘10’, and ‘11’). See id. Accordingly, Saalfrank’s description of “a plurality of
`
`individual carriers . . . [being] impinged with a 4-DPSK-modulation” means each carrier sig-
`
`nal within the channel bandwidth is modulated between four possible phases based on the
`
`data representing the portion of the stereo program currently being transmitted via that par-
`
`15
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`

`

`Attorney Docket No. 39521-0005IP1
`IPR of U.S. Patent No. 5,915,210
`
`ticular carrier signal. See Ex. 1004, ¶ 23. In other words, each of Saalfrank’s transmitters
`
`utilizes a particular type of multicarrier modulation (i.e., 4-DPSK-modulation) in order to
`
`generate and transmit signals representing the information contained in stereo radio pro-
`
`grams. See id. These radio programs are a form of audio messages. See id.
`
`With reference to FIG. 1a, Saalfrank describes:
`
`within a statewide transmission region (e.g., 448) carrier frequencies are
`
`transmitted simultaneously with equidistant frequency distances Δf in a fre-
`
`quency range with the bandwidth B. The individual carriers are each modu-
`
`lated with one part of the digital d