`
`Attorney Docket No. 01048-21IP210
`IPR of U.S. Patent No. 5,915,210
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
` Cameron et al.
`In re Patent of:
`U.S. Patent No.: 5,915,210
`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
`
`Attorney Docket No.: 01048-21IP210
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P. O. Box 1450
`Alexandria, VA 22313-1450
`
`CORRECTED1 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
`
`1 Pursuant to the Board granting leave to file a Corrected Petition and Corrected
`
`Declaration to clarify the record and simplify discovery, TMobile submits a (i) co-
`
`filed Corrected Declaration of Dr. Aazhang to expressly include materials that
`
`previously were incorporated by reference, without introducing any substantive
`
`change, and (ii) this Corrected Petition to change the corresponding citations.
`
`Further, to illustrate that no substantive change has been introduced, TMobile also
`
`attaches to this Corrected Petition redline versions of both the Corrected
`
`Declaration of Dr. Aazhang (Ex. TMO1025) and the Corrected Petition (Ex.
`
`TMO1026) as compared against the original Declaration and Petition respectively.
`
`
`
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`

`

`
`
`I.
`
`II.
`III.
`
`IV.
`
`V.
`
`VI.
`
`
`
`
`
`
`TABLE OF CONTENTS
`
` Page
`
`MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1) .............................................. 1
`A.
`Real Parties-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 ..................................................................... 3
`REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104 ............................................... 3
`A.
`Grounds for Standing ........................................................................................... 3
`B.
`Challenge under 37 C.F.R. § 42.104(b) and Relief Requested ............................... 3
`SUMMARY OF THE ’210 PATENT .............................................................................. 5
`A.
`Brief Description .................................................................................................. 5
`B.
`Claim Construction .............................................................................................. 6
`1.
`“a . . . transmitter” (Claims 1 and 10) ........................................................ 7
`
`2.
`“means for transmitting a first plurality of carrier signals…” (Claim 19).... 8
`
`3.
`“means for transmitting a second plurality of
`
`carrier signals…” (Claim 19) .................................................................. 10
`“transmit[ting]…in simulcast” (Claims 1, 10, and 19).............................. 12
`
`MANNER OF APPLYING CITED PRIOR ART TO EVERY CLAIM FOR
`WHICH AN IPR IS REQUESTED ................................................................................ 17
`A.
`[GROUND 1] – Saalfrank Anticipates Claims 1 and 10 ...................................... 17
`1.
`Claim 1 ................................................................................................... 21
`
`2.
`Claim 10 ................................................................................................. 25
`
`[GROUND 2] – Saalfrank in view of Nakamura Renders Claim 19 Obvious ...... 32
`[GROUND 3] – Witsaman in view of Bingham Render Claims 1, 10, and 19
`Obvious ............................................................................................................. 38
`1.
`Claim 1 ................................................................................................... 45
`
`2.
`Claim 10 ................................................................................................. 49
`
`3.
`Claim 19 ................................................................................................. 55
`
`CONCLUSION ............................................................................................................. 59
`
`B.
`C.
`
`
`
`i
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`
`
`
`TMO1001
`
`TMO1002
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`TMO1003
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`TMO1004
`
`TMO1005
`
`TMO1006
`
`TMO1007
`
`TMO1008
`
`TMO1009
`
`EXHIBITS
`
`U.S. Patent No. 5,915,210 to Cameron et al. (the “’210
`patent”)
`
`Excerpts from the Prosecution History of the ’210 patent
`(the “Prosecution History”)
`
`Docket for Mobile Telecommunications Technologies,
`LLC v. T-Mobile USA, Inc., et al., Case No. 2:13-CV-
`886-JRG-RSP (E.D. Tex.)
`
`Declaration of Dr. Apostolos Kakaes from Apple Inc. v.
`Mobile Telecommunications Technologies, LLC
`(IPR2014-01036) (“Kakaes Declaration”)
`
`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 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. 2:12cv-308-JRG-RSP (E.D.
`Tex.) (“Clearwire Order”)
`
`English Translation of German Patent Publication No.
`DE4102408 to Saalfrank (“Saalfrank”)
`
`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”)
`
`TMO1010
`
`U.S. Patent No. 5,365,569 to Witsaman et al.
`
`
`
`
`ii
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`

`

`
`
`TMO1011
`
`TMO1012
`
`TMO1013
`
`TMO1014
`
`TMO1015
`
`TMO1016
`
`TMO1017
`
`TMO1018
`
`TMO1019
`
`TMO1020
`
`TMO1021
`
`
`
`
`(“Witsaman”)
`
`John A. C. Bingham, Multicarrier Modulation for Data
`Transmission: An Idea Whose Time Has Come, 28
`IEEE Communications Magazine 5 (May 1990)
`(“Bingham”)
`
`Bernard Le Floch et al., Digital Sound Broadcasting to
`Mobile Receivers, 35 IEEE Transactions on Consumer
`Electronics 493 (Aug. 1989) (“Le Floch”)
`
`Certificate of Translation of German Patent Publication
`No. DE4102408 to Saalfrank
`
`U.S. Patent No. 5,381,449 to Jasper, et al.
`
`U.S. Patent No. 5,544,198 to Saalfrank (referenced infra
`Ex. TMO1024 (“Aaz.”) at ¶ K21)
`
`John D. Oetting, A Comparison of Modulation
`Techniques for Digital Radio, 27 IEEE Transactions on
`Communications 1752 (Dec. 1979) (referenced infra Ex.
`TMO1024 (“Aaz.”) at ¶¶ K21-K22)
`
`U.S. Patent No. 5,168,509 to Nakamura, et al.
`(referenced infra Ex. TMO1024 (“Aaz.”) at ¶ K39)
`
`German Patent Publication No. DE4102408 to Saalfrank
`
`Corrected Petition for Inter Partes Review of U.S.
`Patent No. 5,915,210 from Apple Inc. v. Mobile
`Telecommunications Technologies, LLC (IPR2014-
`01036) (filed June 27, 2014)(“Apple IPR petition”)
`
`Agreed Terms of Joint Claim Construction and
`Prehearing Statement from Mobile Telecommunications
`Technologies, LLC v. T-Mobile USA, Inc., Case No. 2-
`13-CV-886 (E.D. Tex.)
`
`Disputed Terms of Joint Claim Construction and
`Prehearing Statement from Mobile Telecommunications
`Technologies, LLC v. T-Mobile USA, Inc., Case No. 2-
`
`iii
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`

`
`
`TMO1024
`
`TMO1023
`
`TMO1025
`
`TMO1026
`
`13-CV-886 (E.D. Tex.)
`
`Corrected Declaration of Dr. Behnaam Aazhang
`(“Aaz.”)
`
`Institution of Inter Partes Review Decision from
`Clearwire Corporation and Clear Wireless LLC v.
`Mobile Telecommunications Technologies, LLC, Case
`IPR2013-00306 (USPTO PTAB)
`
`Redline Comparison of Original and Corrected
`Declaration of Dr. Behnaam Aazhang
`
`Redline Comparision of Original and 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
`
`
`
`
`iv
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`

`

`
`
`T-Mobile USA, Inc. and T-Mobile US, Inc. (collectively, “Petitioners” or
`
`“T-Mobile”) petition 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”) and assert that there exists a reasonable
`
`likelihood that Petitioners will prevail with respect to at least one of the Challenged
`
`Claims. T-Mobile respectfully submits 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 Parties-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`
`Petitioners, T-Mobile USA, Inc. and T-Mobile US, Inc., are the real parties-
`
`in-interest for the instant Petition.
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`
`T-Mobile is not aware of any terminal disclaimers for the ’210 patent. The
`
`’210 patent is presently involved in another IPR action, styled: Apple Inc. v.
`
`Mobile Telecommunications Technologies, LLC (IPR2014-01036) (filed June 27,
`
`2014) (hereinafter, the “Apple IPR”). The Challenged Claims and prior art
`
`references of the Apple IPR petition are identical to those raised by T-Mobile in
`
`the instant petition. See Ex. TMO1019. Thus, although a formal motion for joinder
`
`or consolidation of the instant action with the Apple IPR would be premature under
`
`the rules prior to an institution decision in the Apple IPR, T-Mobile respectfully
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`

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`submits that in view of T-Mobile challenging the ’210 Patent on the nearly
`
`identical grounds as in the Apple IPR, the Patent Trial and Appeal Board
`
`(“Board”) may wish to consider consolidating these matters already at this time.
`
`The ’210 patent is also presently involved in five pending district court litigations
`
`(the “Litigations”), one of which names T-Mobile 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
`
`Telecommunications 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.) (hereinafter, the “T-
`
`Mobile litigation”); and Mobile Telecommunications Technologies, LLC v.
`
`Samsung Telecommunications America, LLC, Case No. 2:13-CV-259 (E.D. Tex.).2
`
`C. Counsel Under 37 C.F.R. § 42.8(b)(3) and Service Information
`
`Petitioners designate Pierre J. Hubert, Reg. No. 45,826, as Lead Counsel and
`
`Steven J. Pollinger, Reg. No. 35,326, both available at 300 West Sixth Street; Suite
`
`
`2 A sixth district court action, Mobile Telecommunications Technologies, LLC v.
`
`Clearwire Corp., Case No. 2:12-cv-308 (E.D. TEX.) involved a ’210 parent, U.S.
`
`Patent No. 5,590,403 (“the ’403 patent”). This action is no longer pending.
`
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`1700; Austin, Texas 78701 (T: (512) 692-8700, F: (512) 692-8744). Please address
`
`all correspondence and service to counsel to this address, or via electronic service
`
`by email at 01048-21IP210@McKoolSmith.com
`
`II.
`
`PAYMENT OF FEES – 37 C.F.R. § 42.103
`This Petition for IPR, which requests review of three claims (1, 10, and 19)
`
`of the ’210 patent, and which is accompanied by a payment of $23,000, meets the
`
`fee requirements under 35 U.S.C. § 312(a)(1). Petitioners authorize the Patent and
`
`Trademark Office (the “Patent Office”) to charge Deposit Account No. 50-5723 in
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`the fee amount required for this Petition, as set in 37 C.F.R. § 42.15(a), and
`
`authorizes 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
`
`Petitioners certify that the ’210 patent is available for IPR and that T-Mobile
`
`is not barred or estopped from requesting an IPR challenging the ’210 patent
`
`claims on the grounds identified in this Petition. The present Petition is being filed
`
`within one year of receipt of service of the T-Mobile litigation complaint, which
`
`alleged infringement of the ’210 patent and was filed in Case No. 2:13-CV-886-
`
`JRG-RSP on October 13, 2013. See T-Mobile litigation Docket, Ex. TMO1003.
`
`B. Challenge under 37 C.F.R. § 42.104(b) and Relief Requested
`
`T-Mobile requests an IPR of the Challenged Claims on the grounds set forth
`
` 3
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`
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`in the table shown below, and requests that each of the Challenged Claims be
`
`found unpatentable. An explanation of how these claims are unpatentable under the
`
`statutory grounds identified below, including an identification of where each
`
`element is found in the prior art patents and/or printed publications and the
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`relevance of each prior art reference, is provided in the form of detailed description
`
`and claim charts that follow. Additional explanation and support for each ground is
`
`set forth in Dr. Behnaam Aazhang’s corrected declaration, Ex. TMO1024 (“Aaz.”),
`
`which adopts and incorporates by reference the relevant parts of the declaration of
`
`Dr. Kakaes, Ex. TMO1004 (“Kakaes Declaration”), from the Apple IPR.
`
`
`Ground
`Ground 1
`Ground 2
`Ground 3
`
`’210 patent
`1 and 10
`19
`1, 10, and 19
`
`Basis for Rejection
`§ 102 based on Saalfrank
`§ 103 based on Saalfrank in view of Nakamura
`§ 103 based on Witsaman in view of Bingham
`
`
`
`Each of the above references qualifies as prior art because each has priority
`
`to the earliest possible priority date to which the ’210 patent could be entitled:
`
`November 12, 1992.3
`
`3 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.
`
` 4
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`

`
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`Saalfrank qualifies as prior art under 35 U.S.C. § 102(a), as it was published
`
`on August 6, 1992, which is earlier than the earliest possible priority date to which
`
`the ’210 patent could be entitled. Nakamura qualifies as prior art under 35 U.S.C.
`
`§ 102(b), as it 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. Witsaman
`
`qualifies as prior art under 35 U.S.C. § 102(e), as it was filed on August 17, 1992,
`
`which is earlier than the earliest possible priority date to which the ’210 patent
`
`could be entitled. Bingham qualifies as prior art under 35 U.S.C. § 102(b), as it
`
`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. T-Mobile
`
`understands that none of these four references have ever been considered by the
`
`Patent Office with regard to the patentability of the ’210 patent.
`
`IV.
`
`SUMMARY OF THE ’210 PATENT
`A. Brief Description
`
`The ’210 patent contains 3 independent and 16 dependent claims that each
`
`relate to combining multi-carrier modulation and simulcast broadcasting
`
`techniques. The patent’s Abstract describes the invention as follows:
`
`A two-way communication system for communication betw[]een a
`system network and a mobile unit. The system network includes a
`plurality of base transmitters and base receivers include[d] in the
`network. . . The system network controls the base transmitters to
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`
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`broadcast in s[]imulcast during both systemwide and zone boundaries
`to maximize information throughout [sic, throughput].
`Ex. TMO1001, Abstract.
`
`The specification continues:
`
`Generally, simulcast technology provides multiple transmitters,
`operating on substantially the same frequencies and transmitting the
`same information positioned to cover extended areas. . .
`The base transmitters of the communication system, such as base
`transmitters 612 and 614 shown in FIG. 6, preferably utilize a multi-
`carrier modulation format as will now be described. In general, a
`multi-carrier modulation format envisions the simultaneous
`transmission of several closely spaced carrier frequencies within a
`desired frequency band, each individually modulated to convey an
`information signal. The multi-carrier modulation format
`advantageously allows for high data transfer rates by providing good
`bit rate transmission rates while keeping below the baud rate
`limitations of simulcast transmission techniques.
`Ex. TMO1001 at 1:52-55; 13:3-14.
`The 3 independent claims of the ’210 patent are challenged herein.
`
`B. Claim Construction
`
`The claims of the ’210 patent have expired and are no longer subject to
`
`amendment. Accordingly, for the purposes of this IPR action, the construction
`
`given to the Challenged Claims’ terms should be similar to that of a district court’s
`
`review. In re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012). That review
`
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` 6
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`
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`standard–whereby claim terms “are generally given their ordinary and customary
`
`meaning” as understood by a person of ordinary skill in the art at the time of the
`
`invention, construing to preserve validity in case of ambiguity–suggests that the
`
`certain of the ’210 patent’s claim terms should be construed as set forth below.
`
`Phillips v. AWH Corp., 415 F.3d 1303, 1312, 1327 (Fed. Cir. 2005).
`
`Claim terms of the ’210 patent that are not addressed below are not believed
`
`to require additional clarification for purposes of the present IPR.4
`
`
`
`1.
`
` “a . . . transmitter” (Claims 1 and 10)
`
`For the 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 matches the construction used in the Apple IPR petition and also
`
`is consistent with the district court constructions in related matters including the
`
`Apple litigation. See, e.g., Ex. TMO1007, pp. 5-6 (“a person of ordinary skill in the
`
`art would understand the terms ‘transmitter’ and ‘base transmitter’ to refer to a
`
`structural unit, and thus, the number of transmitters in a given system or method is
`
`
`4 In as much as 37 C.F.R. § 42.104(b)(2) defines a narrow scope of inquiry in this
`
`petition, Petitioners do not acknowledge claim compliance with 35 U.S.C. § 112,
`
`through its construction for terms that follow, or otherwise.
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` 7
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`dependent on structure, not function....[T]he Court rejects [Plaintiff’s] implication
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`that transmitting multiple signals or outputs from a single structural unit can
`
`suffice as multiple transmitters.”); Ex. TMO1006, pp. 9-10 (“[t]he Court therefore
`
`hereby construes ‘transmitter[s]’ . . . to have their plain meaning. The Court further
`
`hereby adopts the above-quoted conclusions reached in Clearwire [.]”); Ex.
`
`TMO1005 at p. 13 (“The terms ‘transmitter[s]’ and ‘base transmitter[s]’ do not
`
`require construction and should be afforded their plain and ordinary meanings[.]”).
`
`Additionally, the ’210 patent itself further suggests that a single structural unit
`
`cannot suffice as multiple transmitters if it transmits multiple signals because such
`
`a configuration is explicitly referred to as a single transmitter within the patent
`
`specification. See, e.g., Ex. TMO1001 at Figs. 13, 14; 15:47-16:31.
`
`2.
`
` “means for transmitting a first plurality of carrier signals…”
`(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.” Further, as Applicant essentially
`
`admitted during prosecution–when it asserted that claim 19 included “means-plus-
`
`function recitations, rather than structural recitations as contained in independent
`
`claim 2”–this claim invokes 35 U.S.C. 112 ¶ 6. Ex. TMO1002, p. 278.
`
` 8
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`

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`A means-plus-function claim “shall be construed to cover the structure,
`
`material, or acts described in the specification and equivalents thereof”
`
`corresponding to the recited function. 35 U.S.C. § 112. In the co-pending T-Mobile
`
`litigation, Patent Owner has agreed with Petitioners 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.” See, e.g., Agreed Terms of Joint Claim Construction Statement from T-
`
`Mobile litigation, Ex. TMO1020.
`
`Regarding the structure that corresponds to this function, the district court in
`
`the Apple litigation applied a construction of a “means for transmitting a first
`
`plurality of carrier signals…” under 35 U.S.C. 112 ¶ 6, 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.” Ex. TMO1006, pp. 28-30. And because the
`
`’210 patent specification requires these components to constitute a transmitter
`
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`
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`capable of performing the recited function–or makes them “necessary,” as the
`
`Court noted in the Apple litigation–Petitioners apply the above-cited construction
`
`for the purposes of this Petition. See Ex. TMO1006, p. 31.
`
`In the alternative, if the Board determines that the structure associated with
`
`the recited function should be limited to, simply, a “transmitter”–as unsuccessfully
`
`argued by the Patentee in the Apple litigation (Ex. TMO1006, pp. 25-26)–the prior
`
`art would nevertheless meet such an interpretation of claim 19 under a similar
`
`application to that which is used for the language of claims 1 and 10. Again,
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`alternatively, if the Board determines that, in spite of Applicant’s own explicit
`
`prosecution admissions, the ’210 claim language does not require the structure
`
`from the specification per 35 U.S.C. 112 ¶ 6, the prior art would nevertheless meet
`
`such an interpretation of claim 19 under a similar application to that which is used
`
`for the language of claims 1 and 10.
`
`3.
`
` “means for transmitting a second plurality of carrier signals…”
`(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
`
`information as a respective carrier signal of the first plurality of carrier signals.”
`
`Further, as Applicant essentially admitted during prosecution–when it asserted that
`
`
`
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`10
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`

`
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`claim 19 included “means-plus-function recitations, rather than structural
`
`recitations as contained in independent claim 2”–this claim invokes 35 U.S.C. 112
`
`¶ 6. Ex. TMO1002, p. 278.
`
`A means-plus-function claim “shall be construed to cover the structure,
`
`material, or acts described in the specification and equivalents thereof”
`
`corresponding to the recited function. 35 U.S.C. § 112. In the co-pending T-Mobile
`
`litigation, Patent Owner has agreed with Petitioners that the recited function for the
`
`feature of the “means for transmitting a second plurality of carrier signals…” is
`
`“transmitting a second 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.”
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`See, e.g., Agreed Terms of Joint Claim Construction Statement from T-Mobile
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`litigation, Ex. TMO1020.
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`Regarding the structure that corresponds to this function, the district court in
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`the Apple litigation applied a construction of a “means for transmitting a second
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`plurality of carrier signals…” under 35 U.S.C. 112 ¶ 6, as corresponding to either
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`“base transmitter 1300 including data input 1302, control logic 1304, modulators
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`1306-1314, combiner 1316, power amplifier 1318, and an antenna 1320, as
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`depicted in Figure 13; and equivalents thereof,” or alternatively, “base transmitter
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`1400 including data input 1402, control logic 1404, modulators 1406-1414, power
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`amplifiers 1416-1424, combiner 1426, and an antenna 1428, as depicted in Figure
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`14; and equivalents thereof.” Ex. TMO1006, pp. 28-30. And because the ’210
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`patent specification requires these components to constitute a transmitter capable
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`of performing the recited function–or makes them “necessary,” as the Court noted
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`in the Apple litigation–Petitioners apply the above-cited construction for the
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`purposes of this Petition. See Ex. TMO1006, p. 31.
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`In the alternative, if the Board determines either that the structure associated
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`with the recited function should be limited to, simply, a “transmitter” or that the
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`’210 claim language does not require the structure from the specification per 35
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`U.S.C. 112 ¶ 6, the prior art would nevertheless meet such an interpretation of
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`claim 19 under an application of the prior art similar to that which is used for the
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`language of claims 1 and 10.
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` “transmit[ting]…in simulcast” (Claims 1, 10, and 19)
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`For the purposes of this Petition, the terms “transmit[ting] . . . in simulcast”
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`are construed to mean “transmitting the same information at the same time from a
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`plurality of transmitters by modulating a plurality of carrier signals by the same
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`information signal,” with the understanding that a single transmitter cannot operate
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`in simulcast with itself by using multi-carrier modulation. These constructions
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`match the constructions proposed by T-Mobile in its co-pending litigation, and are
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`a refinement over the constructions set forth in the Apple IPR petition and those
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`resolved by the district court in the Apple litigation. Compare T-Mobile’s
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`proposed construction, with Ex. TMO1019, p. 12, and Ex. TMO1006, p. 15-16.
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`First, like Apple, T-Mobile proposes that the Board adopt the unremarkable district
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`court finding that “a single transmitter cannot operate in simulcast with itself by
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`using multi-carrier modulation.” Ex. TMO1007, pp. 9-10. Second, T-Mobile
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`proposes that simulcasting, as defined by the patent, involves modulating the same
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`underlying information signal over multiple carriers.
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`With regard to the first aspect, T-Mobile, like Apple, merely seeks to
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`incorporate the district court’s rejection of MTel’s argument “that, by using multi-
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`carrier modulation, a single transmitter may operate in simulcast with itself.” Id.
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`Specifically, as the Court concluded, the relevant “specification only envisions
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`‘multi-carrier simulcast’ with two transmitters.” Id. (citing ’403 Pat. at 5:30-43).
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`Further supporting T-Mobile’s proposal, the three independent claims of the ’210
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`patent —the only independent multi-carrier simulcast claims of the asserted patent
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`family—each require both a first transmitter [means] and a second transmitter
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`[means] for simulcast operation of each “multi-carrier transmission system.” ’210
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`Pat. at claims 1, 10, 19.
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`Regarding the second aspect, T-Mobile proposes a slightly narrower
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`construction than Apple, but one that is supported by the intrinsic record. The
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`specification repeatedly describes simulcasting, without exception, as modulating a
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`singular information signal onto the carrier signals of more than one transmitter at
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`the same time (i.e., in every case, there is one information signal—the same
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`signal—modulated onto multiple carriers). See, e.g., id. at Fig. 26 (“Transmitting
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`substantially simultaneously a first information signal and a second information
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`signal, the first information signal being transmitted in simulcast by a first set of
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`base transmitters”); 5:32-33 (“by modulating the first plurality of carrier signals to
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`convey the information signal”); 6:1-8,13-21; 9:66-10:5; 24:64-25-10; 25:21-34
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`(emphases added in both quotations). T-Mobile’s proposal is reflected in the
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`claims themselves. See, e.g., 1:9-14; Fig. 6, claim 10 (“the first information signal
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`being transmitted in simulcast by [the] transmitters”) (emphases added).
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`Moreover, the specification shows that any construction of “simulcast” that
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`does not incorporate this aspect is inconsistent with the patent, and hence incorrect.
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`Take, for example, the patent’s focus on simulcasting’s “dead spots” at 13:38-47:
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`It should also be understood that in accordance with good simulcast
`practice, the respective carrier frequencies between adjacent base
`transmitters, such as base transmitter 612 and base transmitter 614 in
`FIG. 6, should be slightly offset to prevent sustained nodes or ‘dead
`spots’ where destructive interference between the signals from each
`transmitter provides an unusable composite signal, as was explained
`in the background section of this application.
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`“Dead spots” only exist when modulating with the same underlying information
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`signal, because only transmissions based on the same underlying information
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`signals (but out of phase) cancel each other in this manner. See, e.g., Id. at 1:66-
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`2:19 (“Destructive interference occurs when two signals are equal in magnitude
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`and 180° out of phase and completely cancel each other.”). If different information
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`signals were used, they would not “cancel each other” nor create a “dead spot.”
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`In addition, if simulcasting did not require transmitting signals modulated
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`using the same underlying information signal (as opposed to merely transmitting
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`the same information at the same time), the patent claims could be read
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`unreasonably broadly, completely divorced from the patent. Consider this analogy:
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`If a person speaks the word “hello” into a telephone, and at the same time emails
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`“hello” to the same recipient, that could arguably be “simulcasting” under the
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`previous broad construction because, in a context divorced from the patent, the
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`same information (“hello”) is being transmitted at the same time. But from a
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`technological standpoint, the standpoint relevant to one of skill in the art of the
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`patent, this would never be considered simulcasting in the context of the patent that
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`uses modulation of information signals onto carriers. See Ormco Corp. v. Align
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`Tech. Inc., 498 F.3d 1307, 1313-16 (Fed. Cir. 2007) (“[T]o attribute to the claims a
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`meaning broader than any indicated in the patents and their prosecution history
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`would be to ignore the totality of the facts of the case and exalt slogans over real
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`meaning.”).
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`Further, T-Mobile’s proposal is in harmony with statements underlying the
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`district court’s constructions in Clearwire and Apple, and with the Board’s past
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`claim construction findings.5 First, the court in Clearwire correctly distinguished
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`between transmitting the same information and transmitting the same signals. Ex.
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`TMO1007, pp. 9-10. The court noted that the transmitted signals would, at least in
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`some cases, not be identical due, for example, to offsets in carrier frequencies used
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`to prevent interference. Id. Consistent with this, T-Mobile is not proposing that the
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`transmitted signals must be identical, but rather that the underlying information
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`signal (that is modulated onto the carriers to create the transmitted signals) must be
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`the same for simulcasting to occur. Second, as to the Board’s previous claim
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`interpretation from the institution of the ’403 patent, that broader construction was
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`made before the expiration of the patent and under the “broadest reasonable
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`interpretation” standard. See TMO1023, pp. 12-13. As such T-Mobile’s currently
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`proposed construction is not inconsistent with either prior finding.
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`In the alternative, if the Board adopts the broader constructions of the related
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`litigation and the Apple IPR petition, the prior art of this Petition would
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`5 A previous IP