IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Attorney Docket No. 39521-0005IP1
`IPR of U.S. Patent No. 5,915,210
`
`
`
`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
`SIMULCAST TRANSMISSION
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`CORRECTED 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
`
`
`
`
`
`
`
`

`

`
`
`Attorney Docket No. 39521-0005IP1
`IPR of U.S. Patent No. 5,915,210
`
`TABLE OF CONTENTS
`
`I. 
`
`3. 
`
`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 
`II. 
`III.  REQUIREMENTS FOR IPR UNDER 37 C.F.R. §§ 42.104 ............................ 2 
`A.  Grounds for Standing ....................................................................................... 2 
`B.  Challenge and Relief Requested .................................................................... 3 
`C.  Claim Construction .......................................................................................... 4 
`“a . . . transmitter” (Claims 1 and 10) ................................................. 5 
`1. 
`2. 
`“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) .................... 12 
`4. 
`IV.  SUMMARY OF THE ‘210 PATENT ................................................................ 12 
`A.  Brief Description ............................................................................................ 12 
`B.  Summary of the Prosecution History of the ’210 Patent .......................... 13 
`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 UNPATENTABLE ................................................................ 14 
`A.  [GROUND 1] – Saalfrank Anticipates Claims 1 and 10 .......................... 15 
`Claim 1 ................................................................................................... 19 
`1. 
`Claim 10 ................................................................................................ 23 
`2. 
`B.  [GROUND 2] – Saalfrank in view of Nakamura Renders Claim 19
`Obvious ............................................................................................................ 29 
`C.  [GROUND 3] – Witsaman in view of Bingham Render Claims 1, 10,
`and 19 Obvious ............................................................................................... 36 
`Claim 1 ................................................................................................... 42 
`1. 
`Claim 10 ................................................................................................ 47 
`2. 
`Claim 19 ................................................................................................ 55 
`3. 
`VI.  REDUNDACY ....................................................................................................... 59 
`VII.  CONCLUSION ...................................................................................................... 60
`
`
`
`i
`
`

`

`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
`Prosecution 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.) (“Plain-
`tiff’s Opening Brief”)
`
`Claim Construction Order from Mobile Telecommunications
`Technologies, LLC v. Apple Inc., Civil Action No. 2:13-cv-258-
`JRG-RSP (E.D. Tex.) (“Markman Order”)
`
`Claim Construction Order from Mobile Telecommunications
`Technologies, 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
`Communications 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 Trans-
`mission: An Idea Whose Time Has Come, 28 IEEE Communi-
`cations Magazine 5 (May 1990) (“Bingham”)
`
`ii
`
`

`

`APPLE-1012
`
`Attorney Docket No. 39521-0005IP1
`IPR of U.S. Patent No. 5,915,210
`Bernard Le Floch et al., Digital Sound Broadcasting to Mobile
`Receivers, 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
`
`

`

`
`
`Apple Inc. (“Petitioner” or “Apple”) petitions for Inter Partes Review
`
`Attorney Docket No. 39521-0005IP1
`IPR of U.S. Patent No. 5,915,210
`
`(“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 pre-
`
`vail with respect to at least one of the Challenged Claims. Apple respectfully sub-
`
`mits that an IPR should be instituted, and that the Challenged 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 Telecom-
`
`munications 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.); Mo-
`
`bile Telecommunications Technologies, LLC v. T-Mobile USA, Inc., Case No. 2-
`
`13-CV-886 (E.D. Tex.); and Mobile Telecommunications Technologies, LLC v.
`
`
`
`1
`
`

`

`Attorney Docket No. 39521-0005IP1
`IPR of U.S. Patent No. 5,915,210
`Samsung Telecommunications America, LLC, Case No. 2:13-CV-259 (E.D. Tex.).
`
`C. Counsel Under 37 C.F.R. § 42.8(b)(3) and Service Infor-
`mation
`
`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.
`
`PAYMENT OF FEES – 37 C.F.R. § 42.103
`
`II.
`Apple authorizes the Patent and Trademark Office to charge Deposit Ac-
`
`count No. 06-1050 for the fee set in 37 C.F.R. § 42.15(a) for this Petition and au-
`
`thorizes payment 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
`Apple certifies that the ‘210 Patent is available for IPR. Apple also certifies
`
`that it is not barred or estopped from requesting an IPR challenging the patent
`
`claims on the grounds identified in this petition. 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.
`
`2
`
`

`

`Attorney Docket No. 39521-0005IP1
`IPR of U.S. Patent No. 5,915,210
`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 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 explanation of how these Challenged Claims are unpatentable
`
`under the statutory grounds identified below is provided in the form of detailed de-
`
`scription 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 Exhibit APPLE-1004 (“Kakaes
`
`Declaration”), referenced throughout this Petition.
`
`Ground
`Ground 1
`
`‘210 Patent
`1 and 10
`
`Basis for Rejection
`§ 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.
`
`3
`
`

`

`Attorney Docket No. 39521-0005IP1
`IPR of U.S. Patent No. 5,915,210
`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 possi-
`
`ble 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. 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 patent. Witsaman quali-
`
`fies as prior art under 35 U.S.C § 102(e). Specifically, Witsaman was filed on Au-
`
`gust 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 considered 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 re-
`
`gard to the patentability of the ‘210 patent.
`
`C. Claim Construction
`The Board’s review of the claims of an expired patent is similar to that of a
`
`
`
`4
`
`

`

`Attorney Docket No. 39521-0005IP1
`IPR of U.S. Patent No. 5,915,210
`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 person of ordinary skill in the art in ques-
`
`tion at the time of the invention, construing to preserve validity in case of ambigui-
`
`ty) should be applied since the expired claims are not subject to amendment. Un-
`
`der the principles set forth in Phillips, the following claim terms should be con-
`
`strued as set forth below.
`
`“a . . . transmitter” (Claims 1 and 10)
`
`1.
`For purposes of this Petition, the term “a . . . transmitter” is construed by its
`
`plain and ordinary meaning, with the understanding that transmitting multiple sig-
`
`nals or outputs from a single structural unit cannot suffice as multiple transmitters.
`
`This construction mimics constructions 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 construes “transmitter[s]” and “base
`
`transmitter[s]” to have their plain meaning. The Court further 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 person
`
`of ordinary skill in the art would understand the terms “transmitter” and “base
`
`5
`
`

`

`Attorney Docket No. 39521-0005IP1
`IPR of U.S. Patent No. 5,915,210
`transmitter” 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 re-
`
`jects [Plaintiff’s] implication that transmitting multiple signals or outputs from a
`
`single structural unit can suffice as multiple transmitters.”).
`
`The understanding that transmitting multiple signals or outputs from a single
`
`structural unit cannot suffice as multiple transmitters is proper because, in the ‘210
`
`Patent, a configuration that transmits multiple carriers is referred to as a single
`
`transmitter or base transmitter unit. See, e.g., Ex. 1001 at Figs. 13, 14; 15:41-16:23.
`
`For purposes of this Petition, Apple takes no position as to whether the term
`
`“transmitter” should be construed to encompass the proposition that a “transmitter”
`
`must be spatially separated or geographically dispersed from other transmitters.
`
`Apple submits that, regardless of whether this proposition is adopted, the Chal-
`
`lenged 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 rep-
`
`resenting 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
`
`6
`
`

`

`Attorney Docket No. 39521-0005IP1
`IPR of U.S. Patent No. 5,915,210
`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 other proceedings, Patent Owner has represented that the re-
`
`cited function for the feature of the “means for transmitting a first plurality of car-
`
`rier 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 plurali-
`
`ty 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 13:3-5 and 15:49-16:31 should be evalu-
`
`ated, 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 patent and in
`
`agreement with Apple’s proposed construction, the Court determined that “Figures
`
`13 and 14 illustrate embodiments in which all of the illustrated components are
`
`necessary 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 construction that the “two embodiments illustrated by Figures 13 and
`
`7
`
`

`

`Attorney Docket No. 39521-0005IP1
`IPR of U.S. Patent No. 5,915,210
`14 are alternatives and should therefore be included in the . . . construction as al-
`
`ternative corresponding structures.”
`
`Accordingly, for this proceeding, Petitioner applies a construction of a
`
`“means for transmitting a first plurality of carrier signals…” under 35 U.S.C. 112,
`
`sixth paragraph, as corresponding to either “base transmitter 1300 including data
`
`input 1302, control logic 1304, modulators 1306-1314, combiner 1316, power am-
`
`plifier 1318, and an antenna 1320, as depicted in Figure 13; and equivalents there-
`
`of,” 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.”
`
`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 counterar-
`
`guments would undermine the application of the prior art set forth in this petition.
`
`First, the Patent Owner argued that the “means for transmitting” claim language
`
`does not invoke 35 U.S.C. 112, sixth paragraph. As described above, this argu-
`
`ment contradicts the Applicants own statements on the record during original pros-
`
`ecution 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 lan-
`
`guage does not require the structure from the specification per 35 U.S.C. 112, sixth
`
`8
`
`

`

`Attorney Docket No. 39521-0005IP1
`IPR of U.S. Patent No. 5,915,210
`paragraph, the prior art would meet this interpretation of claim 19 using an applica-
`
`tion 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 recit-
`
`ed function is simply a generic “transmitter.” See Ex. 1006, pp. 25-26. Yet, in di-
`
`rect 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 trans-
`
`mitter is the structure corresponding to the functionality 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 simulcast with the first plurality of carrier signals, each of the second plurality of
`
`carrier signals corresponding to and representing substantially the same infor-
`
`mation 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,” con-
`
`9
`
`

`

`Attorney Docket No. 39521-0005IP1
`IPR of U.S. Patent No. 5,915,210
`trasting 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 other proceedings, Patent Owner has represented that the re-
`
`cited function for the feature of the “means for transmitting a second plurality of
`
`carrier signals…” is “transmitting a second plurality of carrier signals in simulcast
`
`with the first plurality of carrier signals, each of the second plurality of carrier sig-
`
`nals corresponding to and representing substantially the same information as a re-
`
`spective carrier signal 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 Litiga-
`
`tion court’s analysis. See Ex. 1006, pp. 28-30. Indeed, based on its review of the
`
`entire specification of the ‘210 patent and in agreement with Apple’s proposed
`
`construction, the Court determined that “Figures 13 and 14 illustrate embodiments
`
`in which all of the illustrated components are necessary to constitute a ‘transmitter’
`
`and to accomplish the recited functions.” Ex .1006, p. 31 (emphasis added). For
`
`this proceeding, Petitioner applies the Court’s construction that the “two embodi-
`
`10
`
`

`

`Attorney Docket No. 39521-0005IP1
`IPR of U.S. Patent No. 5,915,210
`ments illustrated by Figures 13 and 14 are alternatives and should therefore be in-
`
`cluded in the . . . construction as alternative corresponding structures.”
`
`Accordingly, for purposes of this proceeding, Petitioner applies a construc-
`
`tion of a “means for transmitting a first plurality of carrier signals…” under 35
`
`U.S.C. 112, sixth paragraph, as corresponding to either “base transmitter 1300 in-
`
`cluding 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 con-
`
`struction 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 reject-
`
`ed, 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 counterar-
`
`guments, claim 19 is still unpatentable based on the prior art presented in this peti-
`
`tion.
`
`11
`
`

`

`Attorney Docket No. 39521-0005IP1
`IPR of U.S. Patent No. 5,915,210
`“transmit[ting]…in simulcast” (Claims 1, 10 and 19)
`
`4.
`For this Petition, each of the terms “transmit...in simulcast” and “transmit-
`
`ting...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. 15-16 (“Court…construes
`
`‘transmit...in simulcast,’ ‘transmitted...in simulcast,’ and ‘transmitting...in simul-
`
`cast’ to mean ‘transmitting the same information at the same time.’ The Court fur-
`
`ther hereby adopts the above-quoted conclusion reached in Clearwire[.]”)
`
`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 plu-
`rality of base transmitters and base receivers include[d] in the net-
`work. The base transmitters are divided into zonal assignments and
`broadcast in simulcast using multi-carrier modulation techniques. The
`system network controls the base transmitters to broadcast in
`s[]imulcast during both systemwide and zone boundaries to maximize
`
`12
`
`

`

`Attorney Docket No. 39521-0005IP1
`IPR of U.S. Patent No. 5,915,210
`information throughout [sic, throughput]. The preferred mobile unit
`in[cl]udes a noise detector circuit to prevent unwanted transmissions.
`The system network further provides an adaptive registration feature
`for mobile units which controls the registration operation by the mo-
`bile units to maximize information throughout [sic, throughput].
`The ‘210 patent includes 19 claims, of which claims 1, 10 and 19 are independent.
`
`Summary of the Prosecution History of the ’210 Patent
`
`B.
`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 inde-
`
`pendent. See Ex. 1002, pp. 148-154. The Applicant immediately filed a prelimi-
`
`nary amendment cancelling 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:
`
`As to claims 2 and 16, the prior art of record fails to show a multi-
`carrier simulcast transmission system comprising the first and second
`transmitters for simultaneously transmitting the same information sig-
`nals. The system comprises 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.
`Ex. 1002, p. 261.
`
`The Applicant then filed a request for continued examination and prelimi-
`
`13
`
`

`

`Attorney Docket No. 39521-0005IP1
`IPR of U.S. Patent No. 5,915,210
`nary amendment in which the Applicant amended each independent claim, claims
`
`2 and 16, to recite that “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. 1002, p. 276. The Applicant also added new in-
`
`dependent claim 25, which, according to the Applicant, “define[ed] a multi-carrier
`
`simulcast system using means-plus-function recitations, rather than structural reci-
`
`tations as contained in independent claim 2.” Ex. 1002, p. 278.
`
`On April16, 1998, the Examiner again allowed the claims without raising
`
`any rejections. In allowing the claims, the Examiner simply reiterated his previous
`
`reasons for allowance. See Ex. 1002, p. 291.
`
`V. MANNER OF APPLYING CITED PRIOR ART TO EVERY
`CLAIM FOR WHICH AN IPR IS REQUESTED, THUS ES-
`TABLISHING A REASONABLE LIKELIHOOD THAT AT
`LEAST ONE CLAIM OF THE ‘210 PATENT IS UNPATENTA-
`BLE
`
`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 demonstrate 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 reasonable likelihood that at least independent
`
`claims 1, 10, and 19 are unpatentable.
`
`14
`
`

`

`Attorney Docket No. 39521-0005IP1
`IPR of U.S. Patent No. 5,915,210
`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 transmitters for simultaneously transmitting the same information sig-
`
`nals 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 described below, Saalfrank alone, as
`
`well as the combination of Saalfrank and Nakamura and the combination of Wit-
`
`saman and Bingham, each disclose this combination of features, together with the
`
`other features of the claims for which an IPR is being sought.
`
`[GROUND 1] – Saalfrank Anticipates Claims 1 and 10
`
`A.
`The features of claims 1 and 10 of the ‘210 patent are anticipated by
`
`Saalfrank, rendering each of these claims unpatentable under 35 U.S.C. § 102(a).
`
`Saalfrank describes “a procedure for use in common-wave radio broadcast-
`
`ing.” Ex. 1008, Abstract. Specifically, Saalfrank describes a transmission network
`
`in which “common-wave radio operation of transmitter stations participat[e] within
`
`the scope of a nationwide 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.
`
`15
`
`

`

`Attorney Docket No. 39521-0005IP1
`IPR of U.S. Patent No. 5,915,210
`In the implementation described by Saalfrank, a “COFDM-method (Coded
`
`Orthogonal Frequency Division Multiplex) is provided as the transmission proce-
`
`dure, by which within a region, e.g., the transmission area of a statewide radio sta-
`
`tion, utilizing a carrier frequency – bandwidth of e.g., 1.5 MHz, simultaneously
`
`approx. 5…6 stereo programs can be broadcasted.” Id. (emphasis added).
`
`“Within the channel bandwidth available here a plurality of individual carriers
`
`(e.g., 448 carrier frequencies equidistantly spaced over the frequency axis) is im-
`
`pinged 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. According-
`
`ly, Saalfrank’s description of “a plurality of individual carriers . . . [being] im-
`
`pinged with a 4-DPSK-modulation” means each carrier signal within the channel
`
`bandwidth is modulated between four possible phases based on the data represent-
`
`ing the portion of the stereo program currently being transmitted via that particular
`
`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
`
`16
`
`

`

`Attorney Docket No. 39521-0005IP1
`IPR of U.S. Patent No. 5,915,210
`order to generate and transmit signals representing the information contained in
`
`stereo radio programs. See id. These radio programs are a form of audio messag-
`
`es. See id.
`
`With reference to FIG. 1a, Saalfrank describes:
`
`within a statewide transmission region (e.g., 448) carrier frequencies
`are transmitted simultaneously with equidis