Attorney Docket No. 01048-21IP891
`IPR of U.S. Patent No. 5,659,891
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Patent of: Hays et al.
`U.S. Patent No.: 5,659,891
`Issue Date:
`Aug. 19, 1997
`Appl. Serial No.: 08/480,718
`Filing Date:
`Jun. 7, 1995
`Title:
`MULTICARRIER TECHNIQUES IN BANDLIMITED
`CHANNELS
`
`Attorney Docket No.: 01048-21IP891
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`PETITION FOR INTER PARTES REVIEW OF
`UNITED STATES PATENT NO. 5,659,891
`PURSUANT TO 35 U.S.C. §§ 311–319, 37 C.F.R. § 42
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`Attorney Docket No. 01048-21IP891
`IPR of U.S. Patent No. 5,659,891
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`
`TABLE OF CONTENTS
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`Page
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`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 ........................................................................3
`REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104 .................................................3
`A.
`Grounds for Standing Under 37 C.F.R. § 42.104(a) .................................................3
`B.
`Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested ................................3
`C.
`Claim Construction Under 37 C.F.R. §§ 42.104(b)(3) .............................................4
`1.
`“Single Mask-Defined, Bandlimited Channel” (Claims 1, 3, and 5) ............5
`2.
`“Plurality of Transmitters” (Claim 5) ...........................................................6
`3.
`“Paging” (Claims 1, 3, 5) .............................................................................7
`SUMMARY OF THE ’891 PATENT ..................................................................................8
`A.
`Brief Description ......................................................................................................8
`B.
`Summary of the Prosecution History of the ’891 Patent ..........................................9
`MANNER OF APPLYING CITED PRIOR ART TO EACH CLAIM FOR WHICH AN
`IPR IS REQUESTED, THUS ESTABLISHING A REASONABLE LIKELIHOOD
`THAT AT LEAST ONE CLAIM OF THE ’891 PATENT IS UNPATENTABLE ..........10
`A.
`[GROUND 1] – Petrovic Anticipates Claims 1-5 ..................................................10
`1.
`Claim 1 .......................................................................................................16
`2.
`Claim 2 .......................................................................................................20
`3.
`Claim 3 .......................................................................................................22
`4.
`Claim 4 .......................................................................................................26
`5.
`Claim 5 .......................................................................................................26
`[GROUND 2] – Petrovic in View of Raith and Alakija
`Renders Claim 5 Obvious ......................................................................................30
`[GROUND 3] – Cimini Anticipates Claims 1-5.....................................................37
`1.
`Claim 1 .......................................................................................................41
`2.
`Claim 2 .......................................................................................................44
`3.
`Claim 3 .......................................................................................................44
`ii
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`B.
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`C.
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`I.
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`II.
`III.
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`IV.
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`V.
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`Attorney Docket No. 01048-21IP891
`IPR of U.S. Patent No. 5,659,891
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`Claim 4 .......................................................................................................47
`4.
`Claim 5 .......................................................................................................48
`5.
`[GROUND 4] – Cimini in View of Raith and Alakija
`Renders Claim 5 Obvious ......................................................................................52
`REDUNDANCY................................................................................................................59
`VI.
`VII. CONCLUSION ..................................................................................................................59
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`D.
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`iii
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`Attorney Docket No. 01048-21IP891
`IPR of U.S. Patent No. 5,659,891
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`EXHIBITS
`U.S. Patent No. 5,659,891 to Hays et al. (the “’891 patent”)
`
`Unopposed Application for Extension of Time to Answer
`Complaint from Mobile Telecommunications Technologies,
`LLC v. T-Mobile USA, Inc. and T-Mobile US, Inc., Case No.
`2:13-CV-886-JRG-RSP (E.D. Tex.)
`
`Claim Construction Order from Mobile Telecommunications
`Technologies, LLC v. Clearwire Corp., Civil Action No.
`2:12-cv-308-JRG-RSP (E.D. Tex.)
`
`Claim Construction Order from Mobile Telecommunications
`Technologies, LLC v. Apple, Inc., Civil Action No. 2:13-cv-
`258-JRG-RSP (E.D. Tex.)
`
`U.S. Patent No. 5,590,403 to Cameron et al. (the “’403 Patent”)
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`Excerpts from the Prosecution History of the ’891 Patent (the
`“Prosecution History”)
`
`Dr. Rade Petrovic et al., Permutation Modulation for Advanced
`Radio Paging, IEEE Proceedings of Southeastcon ‘93 (7 Apr.
`1993) (“Petrovic”)
`
`Declaration of Dr. Apostolos Kakaes from Apple Inc. v.
`Mobile Telecommunications Technologies, LLC (IPR2014-
`01035) (“Kakaes ’891 Declaration”)
`
`Declaration of Dr. Behnaam Aazhang (“Aazhang
`Declaration”)
`
` WIPO Publication No. 1989/008355 to Raith et al.
`(“Raith”)
`
`C. Alakija and S. P. Stapleton, A Mobile Base Station
`Phased Array Antenna, 1992 IEEE International
`Conference on Selected Topics in Wireless
`Communications at 118 (Jun. 1992) (“Alakija”)
`
`iv
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`TMO1001
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`TMO1002
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`TMO1003
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`TMO1004
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`TMO1005
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`TMO1006
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`TMO1007
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`TMO1008
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`TMO1009
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`TMO1010
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`TMO1011
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`

`

`TMO1012
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`TMO1013
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`Attorney Docket No. 01048-21IP891
`IPR of U.S. Patent No. 5,659,891
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`Leonard J. Cimini, Analysis and Simulation of a Digital Mobile
`Channel Using Orthogonal Frequency Division Multiplexing,
`33 IEEE Transactions on Communications 665 (Jul. 1985)
`(“Cimini”)
`
`MTel’s ’891 Patent Infringement Contentions from Mobile
`Telecommunications Technologies, LLC v. T-Mobile USA, Inc.
`and T-Mobile US, Inc., Case No. 2:13-CV-886-JRG-RSP
`(E.D. Tex.)
`
`
`
`
`v
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`Attorney Docket No. 01048-21IP891
`IPR of U.S. Patent No. 5,659,891
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`T-Mobile USA, Inc. and T-Mobile US, Inc. (collectively, “Petitioner” or “T-
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`Mobile”) petitions for Inter Partes Review (“IPR”) under 35 U.S.C. §§ 311–319
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`and 37 C.F.R. § 42 of claims 1-5 (“the Challenged Claims”) of U.S. Patent No.
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`5,659,891 (“the ’891 patent”) (Ex. TMO1001), of assignee Mobile
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`Telecommunications Technologies, LLC (“Patentee” or “MTel”). As explained in
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`this Petition, there exists a reasonable likelihood that T-Mobile will prevail with
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`respect to at least one of the Challenged Claims.
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`I. MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1)
`
`A.
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`REAL PARTY-IN-INTEREST UNDER 37 C.F.R. § 42.8(B)(1)
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`Petitioner, T-Mobile, is the real party-in-interest.
`
`B.
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`RELATED MATTERS UNDER 37 C.F.R. § 42.8(B)(2)
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`T-Mobile is not aware of any terminal disclaimers for the ’891 Patent.
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`The ’891 Patent is involved in at least three pending litigations (collectively,
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`the “Litigations”); one naming T-Mobile as a defendant: Mobile
`
`Telecommunications Technologies, LLC v. T-Mobile USA, Inc., et al., Case No.
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`2:13-CV-886-JRG-RSP (E.D. Tex.) (hereinafter, the “T-Mobile Litigation”);
`
`Mobile Telecommunications Technologies, LLC v. Apple, Inc., Case No. 2-13-CV-
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`258 (E.D. Tex.) (hereinafter, the “Apple Litigation”); and Mobile
`
`Telecommunications Technologies, LLC v. Leap Wireless International, Inc., Case
`
`No. 2-13-CV-885 (E.D. Tex.).
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`1
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`Attorney Docket No. 01048-21IP891
`IPR of U.S. Patent No. 5,659,891
`
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`The ’891 Patent is involved in one pending IPR petition: Petition for Inter
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`Partes Review by Apple, Inc., IPR2014-01035 (filed June 27, 2014) (the “Apple
`
`IPR”). T-Mobile has reviewed the Corrected Petition in the Apple IPR and, in this
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`Petition, challenges the ’891 Patent on the same grounds.
`
`Although a formal motion from T-Mobile for joinder or consolidation of T-
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`Mobile’s present IPR with the Apple IPR would be premature under the rules prior
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`to an institution decision in the Apple IPR, T-Mobile respectfully submits that in
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`view of T-Mobile challenging the ’891 Patent on the same grounds as in the Apple
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`IPR, the Patent Trial and Appeal Board may wish to consider consolidating these
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`matters already at this time.
`
`C.
`
`COUNSEL UNDER 37 C.F.R. § 42.8(B)(3) AND SERVICE
`INFORMATION
`
`T-Mobile designates Pierre J. Hubert, Reg. No. 45,826, as Lead Counsel and
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`Steven J. Pollinger, Reg. No. 35,326, as Backup Counsel, both available at 300
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`West Sixth Street; Austin, Texas 78701 (T: (512) 692-8700, F: (512) 692-8744)).
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`Please address all correspondence and service to counsel at the address provided in
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`this section. T-Mobile also consents to electronic service by email at 01048-
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`21IP891@McKoolSmith.com.
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`2
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`Attorney Docket No. 01048-21IP891
`IPR of U.S. Patent No. 5,659,891
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`II.
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`PAYMENT OF FEES – 37 C.F.R. § 42.103
`
`T-Mobile authorizes the Patent and Trademark Office (the “Office”) to
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`charge Deposit Account No. 50-5723 for the fee set in 37 C.F.R. § 42.15(a) for this
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`Petition and further authorizes payment for any additional fees to be charged to this
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`Deposit Account.
`
`III. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104
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`A. GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104(A)
`
`T-Mobile certifies that the ’891 Patent is available for IPR. T-Mobile also
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`certifies that it is not barred or estopped from requesting an IPR challenging the
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`patent claims on the grounds identified in this petition. The present petition is
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`being filed within one year of when T-Mobile was served with the Complaint in the
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`co-pending district court litigation, Case No. 2:13-CV-886-JRG-RSP. See
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`TMO1002.
`
`B.
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`CHALLENGE UNDER 37 C.F.R. § 42.104(B) AND RELIEF
`REQUESTED
`
`T-Mobile requests IPR of the Challenged Claims of the ’891 Patent on the
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`grounds set forth in the table below, and requests that each of the claims be found
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`unpatentable. An explanation of how these claims are unpatentable under the
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`statutory grounds identified below, including an identification of where each
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`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
`3
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`Attorney Docket No. 01048-21IP891
`IPR of U.S. Patent No. 5,659,891
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`that follows. Additional explanation and support for each ground is set forth in Dr.
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`Behnaam Aazhang’s declaration, Ex. TMO1009, which adopts and incorporates by
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`reference the relevant parts of the declaration of Dr. Kakaes, Ex. TMO1008
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`(“Kakaes ’891 Declaration”), from the Apple IPR.
`
`
`’891 Patent Claims
`Ground
`Ground 1 1-5
`Ground 2 5
`
`Ground 3 1-5
`Ground 4 5
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`Basis for Rejection
`§ 102 based on Petrovic
`§ 103 based on Petrovic in view of Raith
`
`and Alakija
`§ 102 based on Cimini
`§ 103 based on Cimini in view of Raith and
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`Alakija
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`The ’891 patent issued from an application filed on June 7, 1995. The ’891
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`
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`patent does not claim priority to any previous applications.
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`Petrovic, Cimini, Raith, and Alakija each qualify as prior art under 35
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`U.S.C. § 102(b). Specifically, they were each published no later than April 7, 1993,
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`which is more than one year prior to the June 7, 1995 priority date to which the
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`’891 patent is entitled. These references have not been considered by the Office in
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`this case, but all of these references are before the Office in the Apple IPR.
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`C.
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`CLAIM CONSTRUCTION UNDER 37 C.F.R. §§ 42.104(B)(3)
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`A claim subject to IPR is given its “broadest reasonable construction in light
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`4
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`Attorney Docket No. 01048-21IP891
`IPR of U.S. Patent No. 5,659,891
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`of the specification of the patent in which it appears.”1 37 C.F.R. § 42.100(b).
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`Accordingly, for purposes of this proceeding only, T-Mobile submits constructions
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`for the following terms. All remaining terms should be given their plain meaning.
`
`1.
`
`“Single Mask-Defined, Bandlimited Channel” (Claims 1, 3,
`and 5)
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`Under the broadest reasonable construction standard, Petitioner proposes
`
`that a “single mask-defined, bandlimited channel” be construed at least broadly
`
`enough to encompass “a channel confined to a frequency range.”
`
`With regard to “mask-defined, bandlimited channels,” the ’891 patent
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`describes the following:
`
`[A]ccording to the present invention, increased transmission capacity
`is achieved by operating more than one carrier in a standard
`bandlimited channel assigned for mobile paging use, such as in the
`Narrowband Personal Communications Service or the Part 22 Service.
`In the modulation technique of the present invention, carriers operating
`at different frequencies are fit within a single bandwidth allocation in a
`manner consistent with FCC mask requirements.
`
`Ex. TMO1001, 5:11-19.
`
`
`1 Because claim interpretation standards applied in litigation differ from
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`PTO proceedings, any interpretation of claim terms in this IPR is not binding upon
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`T-Mobile in litigation. See In re Zletz, 13 USPQ 2d 1320, 1322 (Fed. Cir. 1989).
`
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`5
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`Attorney Docket No. 01048-21IP891
`IPR of U.S. Patent No. 5,659,891
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`In other words, the “bandlimit” and “mask” that define the mobile paging
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`channel described in the ’891 patent simply refer to a “standard” range of
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`frequencies that meet certain FCC requirements for mobile paging channels.
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`Accordingly, one of ordinary skill in the art would have understood a “single
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`mask-defined, bandlimited channel” to be a channel confined to a frequency range
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`(e.g., the “Narrowband Personal Communications Service” frequency range
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`defined by the FCC).
`
`“Plurality of Transmitters” (Claim 5)
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`2.
`Under the broadest reasonable construction standard, Petitioner proposes
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`that a “plurality of transmitters” be construed at least broadly enough to encompass
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`a configuration in which multiple carriers are emanated from the same
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`transmission source.
`
`In Mobile Telecommunications Technologies, LLC v. Clearwire Corp., Case
`
`No. 2:12-CV-308 (E.D. Tex.) (the “Clearwire Litigation”), a previous case that
`
`involved U.S. Patent No. 5,590,403 (the “’403 Patent”), the district court construed
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`the term “transmitter” according to its plain and ordinary meaning, but offered the
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`following additional conclusion: “[T]he Court rejects [Plaintiff’s] implication that
`
`transmitting multiple signals or outputs from a single structural unit can suffice as
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`multiple transmitters.” Ex. TMO1003, p. 2. In the Apple Litigation, the district
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`court adopted the same construction and reiterated the same conclusion for the
`6
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`Attorney Docket No. 01048-21IP891
`IPR of U.S. Patent No. 5,659,891
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`claim term “transmitter” in the ’403 Patent, ’891 Patent, and U.S. Patent
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`No. 5,915,210 (the “’210 Patent”). Ex. TMO1004, pp. 9-10.
`
`In the ’403 Patent and ’210 Patent, which share the same specification, a
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`configuration that emanates multiple carriers from a common transmission source
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`(e.g., antenna 1320) is referred to as a single transmitter or base transmitter unit.
`
`See Ex. TMO1005, Figs. 13 and 14, 15:41-16:23. In the ’891 Patent, however, a
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`configuration that emanates multiple carriers from a common transmission source
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`(e.g., antenna 15) is referred to as a “co-located transmitter system.” See Ex.
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`TMO1001, Figs. 1 and 2, col. 4:7-11. In addition, claim 5 of the ’891 Patent
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`requires “colocating said plurality of transmitters such that said plurality of carriers
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`can be emanated from the same transmission source.” Ex. TMO1001, 6:35-37. For
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`purposes of this Petition, the term “plurality of transmitters” in the ’891 Patent
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`should at least encompass a configuration in which multiple carriers are emanated
`
`from the same transmission source (e.g., as illustrated in Figs. 1 and 2).
`
`“Paging” (Claims 1, 3, 5)
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`3.
`Under the broadest reasonable construction standard, Petitioner proposes
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`that a “paging” be construed as a non-limiting descriptive name for the systems in
`
`which the claimed methods may be performed.
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`The preambles of independent claims 1, 3, and 5 recite the term “paging.”
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`Specifically, claim 1 recites “[a] method of operating a plurality of paging
`7
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`Attorney Docket No. 01048-21IP891
`IPR of U.S. Patent No. 5,659,891
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`carriers.” Claim 3 recites “[a] method of operating at least two paging carriers.”
`
`Claim 5 recites “a paging system having a plurality of transmitters.” This is the
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`only recited occurrence of the term “paging” in the Challenged Claims.
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`Petitioner submits that the broadest reasonable interpretation of the term
`
`“paging” should at least encompass the construction advanced by Patent Owner
`
`during litigation. In the Apple Litigation, the Patent Owner argued that “paging” is
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`a non-limiting “descriptive name for the systems in which the methods recited by
`
`the Claims may be performed.” See Ex. TMO1004, p. 17. Accordingly, for
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`purposes of this Petition, in which the broadest reasonable interpretation standard
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`applies, Petitioner proposes that the term “paging” be construed as a non-limiting
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`descriptive name for the systems in which the methods recited by the Challenged
`
`Claims may be performed.
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`IV.
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`SUMMARY OF THE ’891 PATENT
`
`A.
`
`BRIEF DESCRIPTION
`
`The ’891 patent relates to operating more than one carrier within a single
`
`channel. The Abstract of the ’891 patent states:
`
`A method of multicarrier modulation using co-located transmitters to
`achieve higher transmission capacity for mobile paging and two-way
`digital communication in a manner consistent with FCC emission
`mask limits. Co-location of the transmitters obviates the need for
`stringent, symmetrical subchannel interference protection and provides
`8
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`Attorney Docket No. 01048-21IP891
`IPR of U.S. Patent No. 5,659,891
`
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`for a wider range of operating parameters, including peak frequency
`deviation, bit rate, and carrier frequencies, to obtain optimal
`transmission performance.
`
`The ’891 patent includes five claims, of which claims 1, 3, and 5 are
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`independent.
`
`B.
`
`SUMMARY OF THE PROSECUTION HISTORY OF THE ’891
`PATENT
`
`The ’891 patent issued on August 19, 1997 from U.S. Patent Application
`
`No. 08/480,718, which was filed on June 7, 1995 with original claims 1-8, of
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`which claims 1, 3, and 5 were independent. See Ex. TMO1006, pp. 47-48.
`
`In the first Office Action, the Examiner allowed claims 1 and 2, rejected
`
`claims 3 and 4 under 35 U.S.C. § 112, rejected claims 5-7 based on U.S. Patent No.
`
`3,488,445, and objected to claim 8 as allowable if rewritten in independent format.
`
`In particular, the Office Action noted:
`
`As to claims 1, 3 and 8, the frequency difference between the center
`frequency of the outer most carriers and the band edge of the mask is
`greater than half the frequency difference between the center
`frequencies of each adjacent carrier, is not taught or suggested in the
`prior art of record.
`
`Ex. TMO1006, p. 96.
`
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`9
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`Attorney Docket No. 01048-21IP891
`IPR of U.S. Patent No. 5,659,891
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`The Applicant amended claim 3 to overcome the § 112 rejection, rewrote
`
`claim 8 in independent form to include the features of independent claim 5, and
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`cancelled rejected claims 5-7.
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`V. MANNER OF APPLYING CITED PRIOR ART TO EACH CLAIM
`FOR WHICH AN IPR IS REQUESTED, THUS ESTABLISHING A
`REASONABLE LIKELIHOOD THAT AT LEAST ONE CLAIM OF
`THE ’891 PATENT IS UNPATENTABLE
`
`In this Section, T-Mobile proposes grounds of rejection for the Challenged
`
`Claims, explaining the justification for IPR. The references presented in this
`
`Section demonstrate that the features found to justify allowance of independent
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`claims 1, 3, and 5, 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, 3, and 5 are unpatentable.
`
`As more fully described below, Petrovic and Cimini disclose that the
`
`frequency difference between the center frequency of the outer most carriers and
`
`the band edge of the mask is greater than half the frequency difference between the
`
`center frequencies of each adjacent carrier, together with the other features of the
`
`claims for which an IPR is being sought.
`
`A.
`
`[GROUND 1] – PETROVIC ANTICIPATES CLAIMS 1-5
`
`The features of claims 1-5 of the ’891 patent are anticipated by Petrovic,
`
`rendering each Challenged Claim unpatentable under 35 U.S.C. § 102(b).
`
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`10
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`Attorney Docket No. 01048-21IP891
`IPR of U.S. Patent No. 5,659,891
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`Petrovic is a paper presented at the 1993 IEEE SoutheastCon by Dr. Rade
`
`Petrovic and two of the ’891 patent inventors, Walt Roehr and Dennis Cameron.
`
`Petrovic describes a nearly identical system to the one described and claimed in the
`
`’891 patent.
`
`Petrovic describes “efforts to increase both bit rate and spectral efficiency in
`
`simulcast paging networks.” Ex. TMO1007, p. 1, Introduction. To accomplish this
`
`goal, Petrovic proposes and describes a “multicarrier permutation modulation
`
`technique” that “can be used in simulcast networks with high power transmitters.”
`
`Ex. TMO1007, p. 1, Abstract. Petrovic describes encoding data across eight
`
`subcarrier frequencies within a band-limited channel. See Ex. TMO1007, p. 1,
`
`Proposed Modulation Technique. “The signal spectrum at transmitter output is
`
`presented in Fig. 1, and 2.” Ex. TMO1007, p. 2, Experiments.
`
`The proposed multicarrier permutation modulation technique includes
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`“moving the current emission mask boundaries away from the center frequency by
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`+/ 12.5 kHz. This would give a 35 kHz pass band in the middle of the channel and
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`7.5 kHz guard bands on each side for the skirts of the spectrum.” Ex. TMO1007,
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`p. 1, Proposed Modulation Technique. To illustrate the mask boundaries of the
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`band-limited channel, Petrovic guides the reader to “[s]ee dashed lines in Figs. 1
`
`and 2,” which “represent[] the proposed emission mask.” Ex. TMO1007, p. 1,
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`Proposed Modulation Technique; p. 2, Experiments. The following Annotation 1
`11
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`Attorney Docket No. 01048-21IP891
`IPR of U.S. Patent No. 5,659,891
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`of Fig. 1 (Figure 1) highlights the guard bands with relation to the mask
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`boundaries. See Ex. TMO1008, ¶ 19; TMO1009 at ¶¶ 18-21. Thus, the frequency
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`difference between the center frequency of the outer most of the carriers and the
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`band edge of the mask defining the channel is 7.5 kHz.
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`Figure 1: Annotation 1 of Petrovic’s Fig. 1.
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`Petrovic further describes that, “[i]n order to fully utilize the allocated
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`spectrum, and provide fast fall-off of the spectrum in the guard band we propose
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`eight subcarriers spaced 5 kHz apart, so that there is exactly 35 kHz spacing
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`between end subcarriers.” See Ex. TMO1007, p. 1. The following Annotation 2 of
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`Fig. 1 (Figure 2) highlights the spacing between the center frequencies of the
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`subcarriers described by Petrovic. See Ex. TMO1008, ¶ 21.
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`Figure 2: Annotation 2 of Petrovic’s Fig. 1.
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`Taking these teachings together, Petrovic describes a guard band of 7.5 kHz
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`(as shown in Annotation 1) and a spacing between the center frequency of adjacent
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`carriers of 5 kHz (as shown in Annotation 2). In other words, the frequency
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`difference between the center frequency of the outer most of the carriers and the
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`band edge of the mask defining said channel (7.5 kHz) is more than half the
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`frequency difference between the center frequencies of each adjacent carrier
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`(5 kHz), as required by independent claims 1, 3, and 5. Thus, Petrovic describes
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`the feature that led to the allowance of the ’891 patent.
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`Petrovic describes adjacent subcarriers that partially overlap. Annotation 3
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`of Fig. 1 (Figure 3) shows the position of the eight subcarriers within the
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`bandlimited channel, with carriers/subchannels 1, 2, 4, and 8 ‘ON’ and
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`carrier/subchannels 3, 5, 6, and 7 ‘OFF.’ See Ex. TMO1008, ¶ 23.
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`Figure 3: Annotation 3 of Petrovic’s Fig. 1.
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`Where the value of the transmitted signal between carrier/subchannel 1 and
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`carrier/subchannel 2 (circled in blue in Figure 4 (left) below) does not return to
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`practical zero (annotated as a red broken line that extends the lowest point of the
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`mask), the carrier/subchannel 1 overlaps adjacent carrier/subchannel 2. This is
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`illustrated in the following Annotation 4 of an excerpt of Fig. 1 (Figure 4 (left)),
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`which is shown side-by-side with a similarly annotated Fig. 5A of the ’891 patent
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`(Figure 4 (right)) to illustrate the similar type of overlap. See Ex. TMO1008, ¶ 24.
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`Figure 4: Annotation 4 of Petrovic’s Fig. 1 (left); Annotation of Fig. 5A of the
`’891 patent.
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`Petrovic describes using two transmitters, each with four subtransmitters, to
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`transmit the eight subcarriers. Ex. TMO1007, p. 2, Experiments. In particular,
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`“[e]ach transmitter has four subtransmitters capable of 4-FSK over a subset of the
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`8 frequencies. Outputs of the subtransmitters are combined and sent to a common
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`antenna.” Id. See Ex. TMO1008, ¶ 25.
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`In addition to the elements discussed above with regard to claims 1-4, claim
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`5 includes an additional element that requires “co-locating said plurality of
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`transmitters…” As described in Section III(C)(2), supra, the broadest reasonable
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`interpretation of the term “plurality of transmitters” should encompass a
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`configuration in which multiple carriers are emanated from the same antenna.
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`Under this interpretation, Petrovic anticipates claim 5.
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`In particular, Petrovic describes that “[e]ach transmitter has four
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`subtransmitters capable of 4-PSK over a subset of the 8 frequencies. Outputs of the
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`subtransmitters are combined and sent to a common antenna.” Ex. TMO1007, p. 2,
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`Experiments. A block diagram of the four “subtransmitters” described by Petrovic
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`would be structured in a similar manner to the systems shown in Figs. 1 and 2 of
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`the ’891 patent, except with four data sources and modulators instead of two. See
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`Ex. TMO1008, ¶ 26. Moreover, Petrovic describes that “[o]utputs of the
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`subtransmitters are combined and sent to a common antenna [i.e., transmission
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`source].” Ex. TMO1007, p. 2, Experiments (emphasis added). Therefore, under the
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`broadest reasonable interpretation standard, the four subtransmitters described by
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`Petrovic read on “co-locating [a] plurality of transmitters such that said plurality of
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`carriers can be emanated from the same transmission source,” as recited in claim 5.
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`Claim 1
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`1.
`A method of operating a plurality of paging carriers in a single mask-
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`defined, bandlimited channel comprising the step of
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`Petrovic describes a paging system: “The multicarrier permutation
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`modulation technique proposed in this paper provides higher bit rates and spectrum
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`efficiencies than that achieved in any state-of-the-art radio paging system. It can
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`be used in simulcast networks with high power transmitters, where long symbol
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`intervals and noncoherent detection are required.” Ex. TMO1007, p. 1, Abstract
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`(emphasis added).
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`Furthermore, Petrovic describes a mask-defined bandlimited channel: “First
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`we propose doubling the channel bandwidth in order to allow higher throughput.
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`This should be done by moving the current emission mask boundaries away from
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`the center frequency by +/12.5 kHz. This would give a 35 kHz pass band in the
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`middle of the channel and 7.5 kHz guard bands on each side for the skirts of the
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`spectrum.” Ex. TMO1007, p. 1, Proposed Modulation Technique (emphasis
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`added). In other words, Petrovic describes a bandlimit (i.e., a pass band) of 35 kHz,
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`satisfying the proposed construction of “a channel confined to a frequency range”
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`(under broadest reasonable interpretation). See Ex. TMO1008, ¶¶ 19-21.
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`Additionally, Petrovic describes transmitting a plurality of carriers on the
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`same channel: “In order to fully utilize the allocated spectrum, and provide fast
`
`fall-off of the spectrum in the guard band we propose eight subcarriers spaced
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`5 kHz apart, so that there is exactly 35 kHz spacing between end subcarriers.”
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`Ex. TMO1007, p. 1, Proposed Modulation Technique. Petrovic further describes
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`two transmitters that transmit data over eight subcarriers, where each transmitter
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`transmits four subcarriers via a single antenna (i.e., the “same location”): “Each
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`transmitter has four subtransmitters capable of 4-PSK over a subset of the
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`8 frequencies. Outputs of the subtransmitters are combined and sent to a common
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`antenna.” Ex. TMO1007, p. 2, Experiments.
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`transmitting said carriers from the same location with said carriers having
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`center frequencies within said channel
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`Petrovic describes two transmitters that transmit data over eight subcarriers,
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`where each transmitter transmits four subcarriers via a single antenna (i.e., the
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`“same location”): “Each transmitter has four subtransmitters capable of 4-PSK
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`over a subset of the 8 frequencies. Outputs of the subtransmitters are combined and
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`sent to a common antenna.” Ex. TMO1007, p. 2, Experiments. Thus, Petrovic
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`teaches the transmission of at least four subcarriers from the same location.
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`Petrovic describes subcarriers that have center frequencies within the pass
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`band of the channel: “In order to fully utilize the allocated spectrum, and provide
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`fast fall-off of the spectrum in the guard band we propose eight subcarriers
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`spaced 5 kHz apart, so that there is exactly 35 kHz spacing between end
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`subcarriers.” Ex. TMO1007, p. 1, Proposed Modulation Technique (emphasis
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`added). In other words, each carrier is centrally located within evenly spaced
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`subchannels such that the center frequency of each carrier is 5 kHz apart, as shown
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`in Annotation 2 of Fig. 1 (Figure 5):
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`Figure 5: Annotation 2 of Petrovic’s Fig. 1.
`See Ex. TMO1008, ¶¶ 21-22.
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`
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`such that the frequency difference between the center frequency of the outer
`
`most of said carriers and the band edge of the mask defining said channel is more
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`than half the frequency difference between the center frequencies of each adjacent
`
`carrier.
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`Petrovic describes that the frequency difference between the center
`
`frequency of the outer most of said carriers and the band edge of the mask defining
`
`said channel is more than half the frequency difference between the center
`
`frequencies of each adjacent carrier. In particular, Petrovic describes: “First we
`
`propose doubling the channel bandwidth in order to allow higher throughput. This
`
`should be done by moving the current emission mask boundaries away from the
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`center frequency by +/ 12.5 kHz. This would give a 35 kHz pass band in the
`
`middle of the channel and 7.5 kHz guard bands on each side for the skirts of the
`
`spectrum. . . . In order to fully utilize the allocated spectrum, and provide fast fall-
`
`off of the spectrum in the guard band we propose eight subcarriers spaced 5 kHz
`
`apart, so that there is exactly 35 kHz spacing between end subcarriers.”
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`Ex. TMO1007, p. 1, Proposed Modulation Technique.
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`In other words, there is 5 kHz between the center frequencies of each
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`adjacent carrier and 7.5 kHz between the center frequency of the outer most of said
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`carriers and the band edge of the mask defining the channel, where 7.5 is more
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`than half of 5. See Ex. TMO1008, ¶¶ 21-22. Thi