UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`T-MOBILE USA, INC. and T-MOBILE US, INC.,
`Petitioner
`
`
`v.
`
`
`MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC,
`Patent Owner
`
`____________
`
`
`Case IPR2015-00015
`Patent 5,915,210
`
`____________
`
`
`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 ............................................................................................. 2 
`II.
`III. PROPER CLAIM CONSTRUCTION ............................................................ 3 
`A.
`Construction of Independent Claim Terms ........................................... 7 
`1.
`“representing substantially the same information as” of
`claims 1, 10, and 19 .................................................................... 7 
`“transmit[] [the] second plurality of carrier signals in
`simulcast with the first plurality of carrier signals” of
`claims 1, 10, and 19 .................................................................... 8 
`“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” of claims 1, 10, and 19 .................................................. 9 
`IV. SUMMARY OF ARGUMENTS .................................................................. 10 
`V.
`REFERENCES RELIED UPON BY PETITIONER .................................... 13 
`A.
`Saalfrank ............................................................................................. 13 
`B.
`Nakamura ............................................................................................ 14 
`C. Witsaman ............................................................................................. 15 
`D.
`Bingham ............................................................................................... 16 
`VI. GROUND 1 – CLAIMS 1 AND 10 ARE NOT ANTICIPATED BY
`SAALFRANK. ................................................................................................. 16 
`A.
`Saalfrank does not disclose “not represented” limitation of
`elements 1(a) and 10(a). ...................................................................... 16 
`Saalfrank does not disclose the “transmit . . . in simulcast”
`limitation of elements 1(b) and 10(b). ................................................. 18 
`VII. GROUND 2 – CLAIM 19 IS NOT OBVIOUS OVER SAALFRANK
`IN VIEW OF NAKAMURA. .......................................................................... 19 
`A.
`Saalfrank in view of Nakamura do not disclose “not
`represented” limitation of element 19(a). ............................................ 19 
`
`2.
`
`3.
`
`B.
`
`i
`
`

`

`
`
`1.
`
`2.
`
`B.
`
`Saalfrank does not disclose “not represented” limitation
`of element 19(a). ....................................................................... 19 
`Nakamura does not disclose “not represented” limitation
`of element 19(a). ....................................................................... 21 
`Saalfrank in view of Nakamura does not disclose “transmit . . .
`in simulcast” limitation of element 19(b). ........................................... 22 
`VIII. GROUND 3 – CLAIMS 1, 10, AND 19 ARE NOT OBVIOUS OVER
`WITSAMAN IN VIEW OF BINGHAM. ......................................................... 23 
`A. Witsaman in view of Bingham do not disclose “not represented”
`limitation of elements 1(a), 10(a), and 19(a). ...................................... 23 
`1. Witsaman does not disclose “not represented” limitation
`of elements 1(a), 10(a), and 19(a). ............................................ 23 
`Bingham does not disclose “not represented” limitation
`of elements 1(a), 10(a), and 19(a). ............................................ 24 
`IX. CONCLUSION .............................................................................................. 27 
`
`2.
`
`ii
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`

`

`
`
`TABLE OF AUTHORITIES
`
`Page
`
`CASES 
`Ex parte Frye, 94 USPQ 2d 1072 (BPAI 2010) ............................................... 21, 26
`Ex parte Papst-Motoren, 1 USPQ2d 1655 (Bd. Pat. App. & Inter. 1986) ................ 4
`Ex Parte Ronald A. Katz Tech. Licensing L.P., Appeal 2008-005127 (BPAI
`Mar. 15, 2010)....................................................................................................... 4
`In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 70 USPQ2d 1827 (Fed.
`Cir. 2004) .............................................................................................................. 5
`In re Kahn, 441 F.3d 977 (Fed. Cir. 2006) ....................................................... 22, 26
`In re Morris, 127 F.3d 1048, 44 USPQ2d 1023 (Fed. Cir. 1997) ............................. 5
`In re Royka, 490 F.2d 981 (CCPA 1974) ................................................... 19, 23, 25
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) ......................................... 22, 26
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) .............................. 4, 5, 6, 8
`Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298 (Fed. Cir. 1999) ........... 6
`Vitrionics Corp. v. Conceptronic, 90 F.3d 1576 (Fed. Cir. 1996) ............................. 5
`
`OTHER AUTHORITIES 
`
`35 United States Code § 102 ...................................................................................... 2
`35 United States Code § 103 ...................................................................................... 2
`35 United States Code § 312(c) ................................................................................. 3
`37 Code of Federal Regulations § 42.104(b)(3) ........................................................ 3
`Manual of Patent Examining Procedure § 2111.01 ................................................... 5
`Manual of Patent Examining Procedure § 2558 ........................................................ 4
`
`iii
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`

`

`
`I.
`
`INTRODUCTION
`
`Patent Owner, Mobile Telecommunications Technologies, LLC, submits this
`
`Preliminary Response to the Petition for Inter Partes Review of claims 1, 10, and
`
`19 of U.S. Patent No. 5,915,210 (“the ‘210 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, German Patent Publication No. DE4102408
`
`(Exhibit 1008, “Saalfrank”) does not disclose “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.” Thus, claims 1 and
`
`10 of the ‘210 Patent are not anticipated by Saalfrank.
`
`Second, with regard to Ground 2, Saalfrank does not disclose “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” as
`
`recited in claim 19 of the ‘210 Patent. Nakamura et al., 256 QAM Modem for
`
`Multicarrier 400 Mbit/s Digital Radio, 5 IEEE Journal on Selected Areas in
`
`Communications 329 (Apr. 1987) (Exhibit 1009, “Nakamura”) does not cure
`
`Saalfrank’s defect and does not disclose or suggest these features. Thus, claim 19
`
`of the ‘210 Patent is not obvious over Saalfrank in view of Nakamura.
`
`1
`
`

`

`
`
`Third, with regard to Ground 3, U.S. Patent No. 5,365,569 (Exhibit 1010,
`
`“Witsaman”) does not disclose “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,” as recited in claims 1, 10, and 19 of
`
`the ‘210 Patent. John A. C. Bingham, Multicarrier Modulation for Data
`
`Transmission: An Idea Whose Time Has Come, 28 IEEE (Exhibit 1011,
`
`“Bingham”) does not cure Witsaman’s defect and does not disclose or suggest
`
`these features. Thus, claims 1, 10, and 19 of the ‘210 Patent are not obvious over
`
`Witsaman in view of Bingham.
`
`Therefore, there is no reasonable likelihood that Petitioner can prevail with
`
`regard to claims 1, 10, and 19 of the ‘210 Patent.
`
`II. BACKGROUND
`
`On October 3, 2014, T-Mobile USA, Inc. and T-Mobile US, Inc. filed a
`
`Petition for Inter Partes Review under 37 C.F.R. § 42.100, requesting inter partes
`
`review of claims 1, 10, and 19 of the ’210 Patent. Petitioner asserts that claims 1,
`
`10, and 19 of the ’210 Patent are unpatentable over the following references under
`
`35 U.S.C. §§ 102 and 103:
`
`(1) Claims 1 and 10 as anticipated by Saalfrank;
`
`(2) Claim 19 as obvious over Saalfrank in view of Nakamura; and
`
`(3) Claims 1, 10, and 19 as obvious over Witsaman in view of Bingham.
`
`2
`
`

`

`
`
`The ‘210 Patent, entitled “Method and System for Providing Multicarrier
`
`Simulcast Transmission,” was filed on July 24, 1997 and issued on June 22, 1999.
`
`The ‘210 Patent claims priority to U.S. Application No. 07/973,918, filed
`
`November 12, 1992, U.S. Patent No. 5,590,403 (“the ‘403 patent”).
`
`The ‘210 Patent describes and claims a method and system for providing
`
`multicarrier simulcast transmission.
`
`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 four terms, among which two are directed to
`
`means plus function terms of claim 19. Paper 8 at 7-17.
`
`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.
`
`3
`
`

`

`
`
`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.
`
`MPEP 2258 provides that “[i]n a reexamination proceeding involving claims
`
`of an expired patent, claim construction pursuant to the principle set forth by the
`
`court in Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329
`
`(Fed. Cir. 2005) (words of a claim “are generally given their plain and ordinary
`
`meaning” as understood by a person of ordinary skill in the art in question at the
`
`time of the invention) should be applied since the expired claim are not subject to
`
`amendment. See Ex parte Papst-Motoren, 1 USPQ2d 1655 (Bd. Pat. App. & Inter.
`
`1986).”
`
`The ‘210 Patent has expired, and therefore, the claim terms should be
`
`construed according to the principles of Phillips, not under the broadest reasonable
`
`interpretation (BRI) standard. See Ex Parte Ronald A. Katz Tech. Licensing L.P.,
`
`Appeal 2008-005127 (BPAI Mar. 15, 2010).
`
`The first step in construing claims under Phillips is to “look to the words of
`
`the claims themselves.” Vitrionics Corp. v. Conceptronic, 90 F.3d 1576, 1582
`
`4
`
`

`

`
`(Fed. Cir. 1996). Second, the specification must be considered when construing
`
`claim terms. Id. “[T]he specification is always highly relevant to the claim
`
`construction analysis. Usually, it is dispositive; it is the single best guide to the
`
`meaning of a disputed term.” Id.
`
`Claim construction under Phillips varies from the BRI standard in at least
`
`two important ways. First, the BRI standard includes a prohibition on reading
`
`limitations in the specification into the claims. In contrast, claim construction
`
`under Phillips does not include this prohibition. For example, “[t]he presumption
`
`that a term is given its plain and ordinary meaning may be rebutted by the
`
`applicant by clearly setting forth a different definition of the term in the
`
`specification. In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1028 (Fed.
`
`Cir. 1997) (the USPTO looks to the ordinary use of the claim terms taking into
`
`account definitions or other “enlightenment” contained in the written description);
`
`But c.f. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369, 70 USPQ2d 1827,
`
`1834 (Fed. Cir. 2004) (“We have cautioned against reading limitations into a claim
`
`from the preferred embodiment described in the specification, even if it is the only
`
`embodiment described, absent clear disclaimer in the specification.”). MPEP
`
`2111.01.
`
`Second, the BRI standard does not rely heavily on extrinsic evidence. In
`
`contrast, when performing claim construction under Phillips, “it is entirely
`
`5
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`

`

`
`appropriate, perhaps even preferable, for a court to consult trustworthy extrinsic
`
`evidence to ensure that the claim construction it is tending to from the patent file is
`
`not inconsistent with clearly expressed, plainly apposite, and widely held
`
`understandings from the pertinent technical field.” Pitney Bowes, Inc. v. Hewlett-
`
`Packard Co., 182 F.3d 1298, 1309 (Fed. Cir. 1999).
`
`As described above, under Phillips the specification must be considered
`
`when construing claim terms. Petitioner acknowledges this rule in passing, yet
`
`does not cite the ‘210 Patent to support any of its four claim constructions. 1
`
`Instead, Petitioner cites
`
`to
`
`the 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,” Ex. 1006) and claim construction
`
`order from Mobile Telecommunications Technologies, LLC v. Clearwire Corp.,
`
`Civil Action No. 2:13-cv-308-JRG-RSP (E.D. Tex.) (“Clearwire Order,” Ex.
`
`1007).
`
`
`1
`Petitioner cites the ‘210 Patent only once, on page 8, merely to support the
`
`District Court’s interpretation regarding whether transmitting multiple
`
`signals or outputs from a single structural unit can suffice as multiple
`
`transmitters.
`
`6
`
`

`

`
`
`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 that
`
`Petitioner’s three claim constructions are based on a Markman Order, they should
`
`be excluded.
`
`A. Construction of Independent Claim Terms
`
`1.
`
`“representing substantially the same information as” of
`claims 1, 10, and 19
`
`Challenged claims 1, 10, and 19 recite “each of the second plurality of
`
`carrier signals [] representing substantially the same information as a respective
`
`carrier signal of the first plurality of carrier signals.” Here, “representing
`
`substantially the same information as” means “the first plurality of carrier signals
`
`and the second plurality of carrier signals represent the same information signal.”
`
`This construction reflects the plain and ordinary meaning of the words and is
`
`supported by the specification. Ex. 1001 at 1:54, 5:26-40 (reproduced below).
`
`Since the “information signal” conveyed by the second plurality of carrier signals
`
`refer to the same “information signal” conveyed by the first plurality of carrier
`
`signals, they represent the same information signal.
`
`7
`
`

`

`
`
`
`
`As a result, under the Phillips standard, the term “representing substantially
`
`the same information as” means “the first plurality of carrier signals and the second
`
`plurality of carrier signals represent the same information signal.”
`
`2.
`
`“transmit[] [the] second plurality of carrier signals in
`simulcast with the first plurality of carrier signals” of
`claims 1, 10, and 19
`
`Challenged claim 1 recites that the second transmitter is configured “to
`
`transmit a second plurality of carrier signals in simulcast with the first plurality of
`
`carrier signals.”
`
`8
`
`

`

`
`
`Challenged claim 10 similarly recites “transmitting the second plurality of
`
`carrier signals from a second transmitter in simulcast with transmission of the first
`
`plurality of carrier signals from the first transmitter.”
`
`Similar to claims 1 and 10, challenged claim 19 recites “means for
`
`transmitting a second plurality of carrier signals in simulcast with the first plurality
`
`of carrier signals.”
`
`Here, this transmission is “transmitting at the same time the first plurality of
`
`carrier signals from the first transmitter and the second plurality of carrier signals
`
`from the second transmitter.”
`
`The plain and ordinary meaning of simulcast is “to broadcast (a program) by
`
`radio and television at the same time.” http://www.merriam-
`
`webster.com/dictionary/simulcast. Therefore, simulcast means that the first and
`
`second transmitters transmit the first and second plurality of carrier signals,
`
`respectively, at the same time.
`
`3.
`
`“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” of claims 1, 10, and 19
`
`Challenged claims 1, 10, and 19 recite “each of the first plurality of carrier
`
`signals representing a portion of the information signal substantially not
`
`9
`
`

`

`
`represented by others of the first plurality of carrier signals.” Here, this limitation
`
`means “each of the first plurality of carrier signals represent a different portion of
`
`the information signal.” This construction reflects the plain and ordinary meaning
`
`of the words and is supported by the specification. Ex. 1001 at 13:34-38
`
`(reproduced below).
`
`This passage of the ‘210 Patent describes modulating unique or different
`
`
`
`data streams of an information signal onto each carrier signal.
`
`IV. SUMMARY OF ARGUMENTS
`
`By this response, Patent Owner respectfully submits the following
`
`arguments and supporting evidence.
`
`Claims 1, 10, and 19 of the ‘210 Patent each 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.”
`
`Patent Owner construes this limitation to mean that “each of the first plurality of
`
`carrier signals represent a different portion of the information signal.”
`
`In contrast, Saalfrank only states that individual carriers are each modulated
`
`10
`
`

`

`
`with one part of the digital data. Nothing in Saalfrank precludes modulating two
`
`carriers with the same part of the digital data.
`
`Because Saalfrank does not teach that each of the first plurality of carrier
`
`signals represent a different portion of the information signal carrier frequencies
`
`that are offset from one another, as recited in claims 1, 10, and 19 of the ‘210
`
`Patent, these claims are not anticipated by Saalfrank.
`
`Nakamura is cited in the Petition for teaching other features. Specifically,
`
`Nakamura does not cure the defect of Saalfrank, and does not teach that each of
`
`the first plurality of carrier signals represent a different portion of the information
`
`signal carrier frequencies that are offset from one another, as recited in claim 19 of
`
`the ‘210 Patent.
`
`Witsaman also does not teach that each of the first plurality of carrier signals
`
`represent a different portion of the information signal carrier frequencies that are
`
`offset from one another, as recited in claims 1, 10, and 19 of the ‘210 Patent. This
`
`is not disputed by Petitioner.
`
`Bingham only states that M bits are used . . . to modulate Nc carriers.
`
`Bingham does not disclose modulating each Nc carrier with a different part of M
`
`bits. Nothing in Bingham precludes modulating two carriers with the same M bits.
`
`Therefore, Bingham does not cure Witsaman’s defect, and claims 1, 10, and
`
`19 of the ‘210 Patent are not obvious in view of Witsaman in view of Bingham.
`
`11
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`

`

`
`
`In addition, Saalfrank discloses a “procedure for the identification of
`
`transmitter or region in common-wave broadcasting networks.” Ex. 1008 at
`
`Abstract. Saalfrank addresses the problem of making transmitter or regional
`
`identification possible in a common-wave broadcasting network through the use of
`
`one or more additional carrier frequencies, which differ from each other from
`
`region to region. Id. “Reception of these additional carrier frequencies making it
`
`possible to select at the receiver specialized regional news.” Id.
`
`Saalfrank discloses that additional carrier frequencies are modulated with
`
`transmitter identification information that can be used for the receiver to identify a
`
`transmitter or that a transmitter is located in a specific region. Id. Therefore, a
`
`group of transmitters in a defined region simultaneously transmit the same content
`
`on the same frequency in addition to identification information that can be
`
`identified and, if desired, received by a receiver. Id. However, since each
`
`transmitter
`
`transmits specific
`
`identification
`
`information,
`
`the
`
`information
`
`transmitted by each transmitter differs. This defect is not cured by the remaining
`
`references cited by Petitioner.
`
`Saalfrank does not disclose the “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” limitation of elements 1(a) and 10(b).
`
`Saalfrank only discloses that “by scrambling the digital program data within the
`
`12
`
`

`

`
`sequence and the allocation to individual carrier frequencies it is prevented that
`
`any transmission errors, caused by fluctuations in field strength, extend over long,
`
`temporarily continuous signal sections, and thus they can be corrected more
`
`easily.”
`
`Saalfrank provides no specific disclosure as to how digital program data is
`
`assigned to individual carrier frequencies. Instead, Saalfrank teaches away from
`
`the asserted patent by requiring redundancy between subcarriers. Specifically,
`
`Saalfrank discloses that “error safety is ensured within the transmission capacity of
`
`an individual additional carrier by sufficient redundancy.” Saalfrank therefore
`
`teaches away from the ’210 Patent, which claims that the subcarriers should not
`
`carry redundant information. This defect is not cured by the Nakamura reference
`
`cited by Petitioner.
`
`Supporting evidence for these arguments includes, but is not limited to, the
`
`’210 Patent specification, Ex. 1001, Saalfrank, Ex. 1008, Nakamura, Ex. 1009,
`
`Witsaman, Ex. 1010, and Bingham, Ex. 1011.
`
`V. REFERENCES RELIED UPON BY PETITIONER
`
`A.
`
`Saalfrank
`
`Saalfrank is directed to a procedure for use in common-wave radio
`
`broadcasting. Ex. 1008 at 1. For common-wave broadcasting, it is necessary for
`
`the modulation content of
`
`the
`
`transmitted frequencies of
`
`the
`
`individual
`
`13
`
`

`

`
`broadcasting stations to be identical. When transmitting different signals, in order
`
`to make transmitter or regional identification possible, one or more additional
`
`carrier frequencies, which differ from each other from region to region, are
`
`emitted.
`
`B. Nakamura
`
`Nakamura is directed to a method to achieve good performance of a 256
`
`QAM modem with 400 Mbit/s transmission capacity. Ex. 1009 at Abstract. A
`
`variety of novel techniques include 1) an accurate 256 QAM modulator employing
`
`a new monolithic multiplier IC, 2) a carrier recovery circuit which satisfies such
`
`requirements, 3) a highly stable high-level decision circuit, and 4) a forward error
`
`correcting code. Id.
`
`Since Petitioner acknowledges, in Paper 8 at 30, that Saalfrank “does not
`
`describe its transmitter structures (and their sub-components) with the specificity
`
`of these figures,” Petitioner relies, in Paper 8 at 32-38, on Nakamura for the
`
`specific components of the transmitters that are used in Saalfrank’s system.
`
`Specifically, Petitioner states that Nakamura describes “what is known as a 256
`
`QAM Quadrature Amplitude Modulation (QAM) based transmitter, capable of
`
`modulating 4 carrier signals by an information signal.” Paper 8 at 34.
`
`
`
`14
`
`

`

`
`
`C. Witsaman
`
`Witsaman is directed to a digital simulcast transmission system for
`
`broadcasting the same paging signal for a number of spaced-apart broadcast sites.
`
`Ex. 1010 at Abstract. FIG. 2, which is shown below, is illustrative of a wide area
`
`group (WAG) of the paging system of Witsaman. The spaced-apart broadcast sites
`
`are called stations in FIG. 2.
`
`
`
`Witsaman provides that “the individual stations 30 will all broadcast the
`
`same paging signal at the same time.” Ex. 1010 at 7:33-35. Further Witsaman
`
`describes that “[e]ach station broadcasts pages over a distinct carrier frequency that
`
`is associated with a specific WAG 37.” Id. at 35:47-49. So, at least within a wide
`
`
`
`15
`
`

`

`
`area group (WAG), adjacent stations of Witsaman transmit with the same paging
`
`signal and same carrier frequency.
`
`D. Bingham
`
`Bingham is directed to a method for multicarrier modulation for data
`
`transmission. Ex. 1011 at Title.
`
`Since Petitioner acknowledges, in Paper 8 at 39-40 and 42, that Witsaman
`
`only discloses a method of single carrier modulation, as opposed to multicarrier
`
`modulation, Petitioner relies, in Paper 8 at 40-59, on Bingham for multicarrier
`
`modulation.
`
`VI. GROUND 1 – CLAIMS 1 AND 10 ARE NOT ANTICIPATED BY
`SAALFRANK.
`
`A.
`
`Saalfrank does not disclose “not represented” limitation of
`elements 1(a) and 10(a).
`
`Patent Owner also submits that Saalfrank does not teach, at least, element
`
`1(a) of claim 1 and element 10(b) of claim 10. Elements 1(b) and 10(b) recite,
`
`among other things, “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.” Above, Patent Owner construes this limitation to
`
`mean “each of the first plurality of carrier signals represent a different portion of
`
`the information signal.”
`
`16
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`

`

`
`
`Petitioner asserts that “with respect to a first plurality of carrier signals
`
`representing a portion of the information signal substantially not represented by
`
`others of the first plurality of carrier signals, Saalfrank describes that ‘[t]he
`
`individual carriers are each modulated with one part of the digital data, with the
`
`modulation content of the individual carriers being identical for all transmitter
`
`stations of the . . . region.’” Paper 8 at 23 (emphasis in the original). As a result,
`
`Petitioner is equating the statement in Saalfrank that individual carriers are each
`
`modulated with one part of the digital data with the ‘210 Patent claim limitation
`
`that each of the first plurality of carrier signals represent a different portion of the
`
`information signal.
`
`The Patent Owner submits that Saalfrank does not teach the limitation of the
`
`‘210 Patent, because Saalfrank does not disclose modulating each carrier with a
`
`different part of the digital data. Nothing in Saalfrank precludes modulating two
`
`carriers with the same part of the digital data. In addition, Saalfrank teaches away
`
`from
`
`the asserted patent by requiring redundancy between subcarriers.
`
`Specifically, Saalfrank discloses that “error safety is ensured within the
`
`transmission capacity of an individual additional carrier by sufficient redundancy.”
`
`Saalfrank therefore teaches away from the ’210 Patent, which claims that the
`
`subcarriers should not carry redundant information. This defect is not cured by the
`
`remaining references cited by Petitioner.
`
`17
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`
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`B.
`
`Saalfrank does not disclose the “transmit . . . in simulcast”
`limitation of elements 1(b) and 10(b).
`
`Saalfrank discloses a “procedure for the identification of transmitter or
`
`region in common-wave broadcasting networks.” Ex. 1008 at Abstract. Saalfrank
`
`addresses the problem of making transmitter or regional identification possible in a
`
`common-wave broadcasting network through the use of one or more additional
`
`carrier frequencies, which differ from each other from region to region. Id.
`
`“Reception of these additional carrier frequencies making it possible to select at
`
`the receiver specialized regional news.” Id.
`
`Saalfrank discloses that additional carrier frequencies are modulated with
`
`transmitter identification information that can be used for the receiver to identify a
`
`transmitter or that a transmitter is located in a specific region. Id. Therefore, a
`
`group of transmitters in a defined region simultaneously transmit the same content
`
`on the same frequency in addition to identification information that can be
`
`identified and, if desired, received by a receiver. Id. However, since each
`
`transmitter transmits specific identification information, the information
`
`transmitted by each transmitter differs. This defect is not cured by the remaining
`
`references cited by Petitioner.
`
`In summary, for anticipation to be found, a cited reference must disclose all
`
`elements of the claim within the document. Because Saalfrank does not teach
`
`18
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`

`
`elements 1(a) and 1(b) of claim 1 and elements 10(a) and 10(b) of claim 10,
`
`Saalfrank does not teach claims 1 and 10 of the ‘210 Patent. Therefore, claims 1
`
`and 10 of the ‘210 Patent are not anticipated by Saalfrank.
`
`
`
`VII. GROUND 2 – CLAIM 19 IS NOT OBVIOUS OVER SAALFRANK IN
`VIEW OF NAKAMURA.
`
`Pursuant to the requirements for establishing a prima facie case of
`
`obviousness under 35 U.S.C. §103, all the claim limitations must be taught or
`
`suggested by the applied references. In re Royka, 490 F.2d 981 (CCPA 1974).
`
`A.
`
`Saalfrank in view of Nakamura do not disclose “not represented”
`limitation of element 19(a).
`
`Claim 19 of the ‘210 Patent in element 19(a) recites “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.”
`
`Above, Patent Owner construes this limitation to mean “each of the first plurality
`
`of carrier signals represent a different portion of the information signal.”
`
`1.
`
`Saalfrank does not disclose “not represented” limitation of
`element 19(a).
`
`As explained above with regard to ground 1, Petitioner asserts that “with
`
`respect to a first plurality of carrier signals representing a portion of the
`
`19
`
`

`

`
`information signal substantially not represented by others of the first plurality of
`
`carrier signals, Saalfrank describes that ‘[t]he individual carriers are each
`
`modulated with one part of the digital data, with the modulation content of the
`
`individual carriers being identical for all transmitter stations of the . . . region.’”
`
`Paper 8 at 23 (emphasis in the original). As a result, Petitioner is equating the
`
`statement in Saalfrank that individual carriers are each modulated with one part of
`
`the digital data with the ‘210 Patent claim limitation that each of the first plurality
`
`of carrier signals represent a different portion of the information signal.
`
`The Patent Owner submits that Saalfrank does not teach the limitation of the
`
`‘210 Patent, because Saalfrank does not disclose modulating each carrier with a
`
`different part of the digital data. Nothing in Saalfrank precludes modulating two
`
`carriers with the same part of the digital data.
`
`In addition, Saalfrank teaches away from the asserted patent by requiring
`
`redundancy between subcarriers. Specifically, Saalfrank discloses that “error
`
`safety is ensured within the transmission capacity of an individual additional
`
`carrier by sufficient redundancy.” Saalfrank therefore teaches away from the ’210
`
`Patent, which claims that the subcarriers should not carry redundant information.
`
`This defect is not cured by the Nakamura reference cited by Petitioner.
`
`20
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`
`
`2.
`
`Nakamura does not disclose “not represented” limitation of
`element 19(a).
`
`Petitioner acknowledges, in Paper 8 at 32, that Saa