Paper 16
`Trials@uspto.gov
`571-272-7822
`
`Date Entered: September 23, 2014
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO. LTD., SAMSUNG ELECTRONICS
`AMERICA, INC., SAMSUNG TELECOMMUNICATIONSAMERICA,
`LLC, and SAMSUNG AUSTIN SEMICONDUCTOR, LLC,
`Petitioner,
`
`v.
`
`REMBRANDT WIRELESS TECHNOLOGIES, LP,
`Patent Owner.
`____________
`
`Case IPR2014-00518
`Patent 8,023,580 B2
`____________
`
`Before JAMESON LEE, HOWARD B. BLANKENSHIP, and
`JUSTIN BUSCH, Administrative Patent Judges.
`
`BLANKENSHIP, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`I. BACKGROUND
`Samsung Electronics Co. Ltd., Samsung Electronics America, Inc.,
`
`Samsung Telecommunications America, LLC, and Samsung Austin
`
`
`
`
`REMBRANDT EXHIBIT 2002
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`
`Trials@uspto.gov
`571-272-7822
`
`Date Entered: September 23, 2014
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO. LTD., SAMSUNG ELECTRONICS
`AMERICA, INC., SAMSUNG TELECOMMUNICATIONSAMERICA,
`LLC, and SAMSUNG AUSTIN SEMICONDUCTOR, LLC,
`Petitioner,
`
`v.
`
`REMBRANDT WIRELESS TECHNOLOGIES, LP,
`Patent Owner.
`____________
`
`Case IPR2014-00518
`Patent 8,023,580 B2
`____________
`
`Before JAMESON LEE, HOWARD B. BLANKENSHIP, and
`JUSTIN BUSCH, Administrative Patent Judges.
`
`BLANKENSHIP, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`I. BACKGROUND
`Samsung Electronics Co. Ltd., Samsung Electronics America, Inc.,
`
`Samsung Telecommunications America, LLC, and Samsung Austin
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`REMBRANDT EXHIBIT 2002
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`Semiconductor, LLC (collectively, “Petitioner”) request inter partes review
`of claims 1, 2, 4, 5, 10, 13, 19–22, 49, 52–54, 57–59, 61, 62, 66, 70, and 76–
`79 of U.S. Patent No. 8,023,580 B2 (“the ’580 patent,” Ex. 1201) under 35
`U.S.C. §§ 311–319. Paper 4 (Corrected Petition or “Pet.”). Rembrandt
`Wireless Technologies, LP (Patent Owner) filed a preliminary response
`(Paper 14, “Prelim. Resp.”) under 37 C.F.R. § 42.107. We have jurisdiction
`under 35 U.S.C. § 314.
`For the reasons that follow, we institute an inter partes review of
`
`claims 1, 4, 5, 10, 13, 20–22, 54, 57, 58, 61, 62, 66, 70, and 76–79 of the
`’580 patent. We do not institute review of challenged claims 2, 19, 49, 52,
`53, and 59.
`
`
`Related Proceedings
`According to Petitioner, the ’580 patent is involved in the following
`lawsuit: Rembrandt Wireless Technologies, LP v. Samsung Electronics Co.
`Ltd., No. 2:13-cv-00213 (E.D. Tex. 2013). Pet. 2. The ’580 patent also has
`been challenged in the following cases: Samsung Electronics Company, Ltd
`v. Rembrandt Wireless Technologies, LP , IPR2014-00514; Samsung
`Electronics Company, Ltd v. Rembrandt Wireless Technologies, LP ,
`IPR2014-00515; and Samsung Electronics Company, Ltd v. Rembrandt
`Wireless Technologies, LP, IPR2014-00519.
`
`The ’580 Patent
`The ’580 Patent issued from an application filed August 19, 2009,
`which claimed priority under 35 U.S.C. § 120 through a chain of intervening
`applications to an application filed December 4, 1998, and which further
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`claimed priority under 35 U.S.C. § 119 to a provisional application filed
`December 5, 1997.
`The technical field of the patent relates to data communications and
`modulators/demodulators (modems), and in particular to a data
`communications system in which a plurality of modems use different types
`of modulation in a network. Ex. 1201, col. 1, ll. 19–23; col. 1, l. 56 – col. 2,
`l. 20.
`
`Illustrative Claim
`1. A communication device capable of communicating
`according to a master/slave relationship in which a slave
`communication from a slave to a master occurs in response to a
`master communication from the master to the slave, the device
`comprising:
`
` a
`
` transceiver, in the role of the master according to the
`master/slave relationship, for sending at least transmissions
`modulated using at least two types of modulation methods,
`wherein the at least two types of modulation methods comprise
`a first modulation method and a second modulation method,
`wherein the second modulation method is of a different type
`than the first modulation method, wherein each transmission
`comprises a group of transmission sequences, wherein each
`group of transmission sequences is structured with at least a
`first portion and a payload portion wherein first information in
`the first portion indicates at least which of the first modulation
`method and the second modulation method is used for
`modulating second information in the payload portion, wherein
`at least one group of transmission sequences is addressed for an
`intended destination of the payload portion, and wherein for the
`at least one group of transmission sequences:
`
`the first information for said at least one group of
`transmission sequences comprises a first sequence, in the first
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`portion and modulated according to the first modulation
`method, wherein the first sequence indicates an impending
`change from the first modulation method to the second
`modulation method, and
`
`the second information for said at least one group of
`transmission sequences comprises a second sequence that is
`modulated according to the second modulation method,
`wherein the second sequence is transmitted after the first
`sequence.
`
`
`Prior Art
`Boer
`
`US 5,706,428
`
`Jan. 6, 1998
`
`(Ex. 1204)
`
`
`
`
`Asserted Ground of Unpatentability
`Petitioner asserts the following ground of unpatentability as to claims
`1, 2, 4, 5, 10, 13, 19–22, 49, 52–54, 57–59, 61, 62, 66, 70, and 76–79 (Pet.
`2–3): obviousness under 35 U.S.C. § 103(a) over Admitted Prior Art
`(“APA”) and Boer.
`
`
`II. ANALYSIS
`Claim Interpretation
`In an inter partes review, the Board construes claim terms in an
`unexpired patent using their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14,
`2012). The claim language should be read in light of the specification as it
`would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
`Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The Office must
`apply the broadest reasonable meaning to the claim language, taking into
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`account any definitions presented in the specification. Id. (citing In re Bass,
`314 F.3d 575, 577 (Fed. Cir. 2002)). There is a “heavy presumption” that a
`claim term carries its ordinary and customary meaning. CCS Fitness, Inc. v.
`Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). The “ordinary and
`customary meaning” is that which the term would have to a person of
`ordinary skill in the art in question. In re Translogic Tech., Inc., 504 F.3d
`1249, 1257 (Fed. Cir. 2007).
`
`Types of Modulation Methods
`Each of claims 1 and 58 recites a transceiver capable of transmitting
`using at least two types of modulation methods, “wherein the at least two
`types of modulation methods comprise a first modulation method and a
`second modulation method, wherein the second modulation method is of a
`different type than the first modulation method . . . .”
`Petitioner submits that the ordinary meaning of “modulation” is
`“‘[t]he process by which some characteristic of a carrier is varied in
`accordance with a modulating wave.’” Pet. 11 (quoting Ex. 1206, 3
`(technical dictionary)). Petitioner contends that a “first modulation method”
`should be interpreted as “a process of varying characteristic(s) of a carrier
`wave that is different from a second modulation method,” and a “second
`modulation method” should be interpreted as “a process of varying
`characteristic(s) of a carrier wave that is different from a first modulation
`method.” Pet. 13. Petitioner submits that, in essence, such an interpretation
`extends to modulation methods that are known to be incompatible with each
`other. Id. at 12.
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`Patent Owner, on the other hand, submits that the terms should be
`construed as a “first modulation method” being “a first method for varying
`one or more characteristics of a carrier in accordance with information to be
`communicated” and a “second modulation method” being “a second method
`for varying one or more characteristics of a carrier in accordance with
`information to be communicated.” Prelim. Resp. 7. Patent Owner submits
`that the broadest reasonable interpretation of “types” of modulation methods
`does not extend to modulation methods that are known merely to be
`incompatible with each other, but is limited to different “families” of
`modulation techniques, e.g., the FSK (frequency shift keying) “family” of
`modulation methods and the QAM (quadrature amplitude modulation)
`“family” of modulation methods. As such, two modulation methods that are
`incompatible with each other (e.g., differential binary phase shift keying
`(DBPSK) modulation and differential quadrature phase shift keying
`(DQPSK) modulation) may still be part of the same “type” of modulation
`method. Id. at 9–12. Patent Owner’s position is thus contrary to Petitioner’s
`position, in that Petitioner contends that “different PSK [phase shift keying]
`modulation methods” may be considered as different “types” of modulation,
`with the “different modulation methods” within the same (PSK) “family”
`being incompatible with each other. Pet. 12.
`For purposes of this decision, we need not, and do not, determine the
`scope of the above-noted terms in controversy. We are persuaded that
`elements in the prior art are within the scope of the relevant terms under any
`reasonable construction. See § II.D, infra.
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`Proposed Grounds of Unpatentability
`A. “Prior Art”
`Section 103 of Title 35 U.S.C., which makes nonobviousness of the
`invention a prerequisite to patentability, requires a determination of the
`differences between the subject matter sought to be patented and “[t]he prior
`art.” In re Bergy, 596 F.2d 952, 965 n.7 (CCPA 1979), aff’d sub nom.
`Diamond v. Chakrabarty, 447 U.S. 303 (1980) (citations omitted).
`However, Title 35 nowhere defines the term “prior art.” Id.
`Its exact meaning is a somewhat complex question of law
`which has been the subject of legal papers and whole chapters
`of books. . . . Basically, the concept of prior art is that which is
`publicly known, or at least known to someone who has taken
`steps which do make it known to the public, . . . or known to the
`inventor against whose application it is being applied.
`
`Id. (citations omitted).
`“The term ‘prior art’ as used in section 103 refers at least to the
`statutory material named in 35 U.S.C. § 102. . . . However,
`section 102 is not the only source of section 103 prior art.
`Valid prior art may be created by the admissions of the parties.”
`
`Riverwood Int’l Corp. v. R.A. Jones & Co., Inc., 324 F.3d 1346, 1354 (Fed.
`Cir. 2003) (citations omitted). However, while a reference can become prior
`art by admission, that doctrine is inapplicable when the subject matter at
`issue is the inventor’s own work. Id.
`
`B. Admitted Prior Art
`Petitioner contends that the ’580 patent contains material that may be
`used as prior art against the patent under 35 U.S.C. § 103(a). Figure 1 of the
`patent is labeled as “Prior Art.” Pet. 6; Ex. 1201, Fig. 1. Further, the ’580
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`patent’s specification refers to “prior art” multipoint communication system
`22 comprising master modem or transceiver 24, which communicates with a
`plurality of tributary modems (“tribs”) or transceivers 26. Pet. 6; Ex. 1201,
`col. 3, ll. 40–44. Further, the ’580 patent describes Figure 2 as illustrating
`the operation of the multipoint communication system of (prior art) Figure 1.
`Pet. 7; Ex. 1201, col. 3, ll. 9–10.
`Patent Owner argues that Petitioner has not shown that the “alleged
`admitted prior art” is the work of another – i.e., not the inventor’s own work.
`Prelim. Resp. 15; see also id. at 16–18. Petitioner has met its initial burden,
`however, in demonstrating that the subject matter of the ’580 patent’s Figure
`1, and accompanying description, constitutes “prior art” by pointing out that
`the patent expressly describes the subject matter as such. See in re Nomiya,
`509 F.2d 566, 570–71 (CCPA 1975) (“We see no reason why appellants’
`representations in their application should not be accepted at face value as
`admissions that Figs. 1 and 2 may be considered ‘prior art’ for any purpose,
`including use as evidence of obviousness under [§] 103.”).
`Patent Owner’s argument that Figures 1 and 2 of the ’580 patent
`represent the inventor’s identification of a “source of a problem” (Prelim.
`Resp. 19–21) is, similarly, inapposite. Petitioner does not rely on the face-
`value admissions in the patent as a problem to be solved or as identifying a
`problem in the prior art. See, e.g., Pet. 19.
`For the foregoing reasons, we are persuaded that, on this record, the
`subject matter of Figures 1 and 2 of the ’580 patent, and the text of the
`patent that further describes those Figures, may be applied as prior art in this
`proceeding.
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`C. Boer
`Boer describes a wireless LAN that includes first stations that operate
`at 1 or 2 Mbps (Megabits per second) data rate and second stations that
`operate at 1, 2, 5, or 8 Mbps data rate. Ex. 1204, Abstract.
`Figure 1 of Boer is reproduced below.
`
`
`Figure 1 is said to be a block diagram of a wireless LAN embodying
`Boer’s invention. Ex. 1204, col. 1, ll. 53–54. LAN 10 includes access point
`12, serving as a base station. The network includes mobile stations 18-1 and
`18-2 that are capable of transmitting and receiving messages at a data rate of
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`1 or 2 Mbps using DSSS (direct sequence spread spectrum) coding. When
`operating at 1 Mbps, a station uses DBPSK modulation. When operating at
`2 Mbps, a station uses DQPSK modulation. Id. at col. 2, ll. 6–27. Mobile
`stations 22-1 and 22-2 are capable of operating at the 1 and 2 Mbps data
`rates using the same modulation and coding as stations 181 and 182. In
`addition, stations 22-1 and 22-2 can operate at 5 and 8 Mbps data rates using
`PPM/DQPSK (pulse position modulation–differential quadrature phase shift
`keying) in combination with the DSSS coding. Id. at ll. 34-44.
`
`D. Claims 1, 4, 5, 10, 13, 20–22, 54, 57, 58, 61, 62, 66, 70,
` and 76–79 – APA and Boer
`
`Petitioner applies the teachings of APA and Boer to demonstrate
`obviousness of the subject matter of claim 1, relying on APA for teaching of
`master/slave communication systems. Pet. 19–24, 28–33 (claim chart).
`Petitioner submits that a person having ordinary skill in the art would have
`been motivated to combine Boer with APA because the combination would
`increase the flexibility and efficiency of prior art master/slave
`communication systems, thus allowing the APA master/slave network to
`adapt to the needs of applications. Id. at 18 (referring to the Declaration of
`David Goodman, Ex. 1220 ¶¶ 100–101).
`Patent Owner responds that Petitioner fails to explain how Boer’s
`statement that “it may be advantageous to provide systems operating at
`higher data rates, which are not in accordance with the [draft 802.11]
`standard” would motivate one of ordinary skill to implement the teachings of
`Boer with APA. Ex. 1204, col. 1, ll. 16–25; Prelim. Resp. 28. We agree
`with Patent Owner. Petitioner, however, submits an alternative reason for
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`the combination that is founded on simplicity and determinacy. Pet. 18; Ex.
`1220 ¶¶ 102–103. In particular, Mr. Goodman testifies that polled multiport
`master/slave communications systems were well known to those of ordinary
`skill in the art for simplicity and determinacy, referring to Exhibit 1218. Ex.
`1220 ¶ 103. Petitioner submits Exhibit 1218 is a November 1994
`publication that compares various strengths and weaknesses for
`communication protocols for embedded systems. Ex. 1218, 7. The
`document states that polling is one of the more popular protocols for
`embedded systems “because of its simplicity and determinacy.” Id. In that
`protocol, a centrally assigned master periodically sends a polling message to
`the slave nodes, giving them explicit permission to transmit on the network.
`Id. The protocol “is ideal for a centralized data-acquisition system where
`peer-to-peer communication and global prioritization are not required.” Id.
`We are persuaded that Petitioner has identified sufficient motivation from
`the prior art for the combination proposed.
`Turning to the requirements of claim 1, the claim recites two types of
`modulation methods, in particular “wherein the at least two types of
`modulation methods comprise a first modulation method and a second
`modulation method,” and the second modulation method is of “a different
`type” than the first modulation method. Petitioner contends that Boer’s
`DBPSK modulation corresponds to the claimed “first” modulation method.
`Pet. 30 (claim chart). Petitioner submits that either of Boer’s DQPSK
`modulation and PPM/DQPSK modulation corresponds to the claimed
`“second” modulation method. Id.
`Patent Owner argues that neither of DQPSK and PPM/DQPSK can be
`considered a modulation method of a type different from DBPSK. Prelim.
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`Resp. 32–35. For purposes of this decision, we need not determine the
`breadth of a different “type” of modulation method as claimed, and need not
`determine whether one of ordinary skill in the art would regard DQPSK to
`be a “type” of modulation method different from DBPSK. Boer’s
`description of PPM/DQPSK modulation falls within the meaning of a
`“different type” of modulation method under any reasonable construction of
`the terms. Cf. Ex. 1220 ¶ 123 (“It is my opinion that PPM/DQPSK is a
`different ‘type’ of modulation than DBPSK under any possible claim
`construction.”). According to Mr. Goodman, phase is not used in PPM,
`unlike in DBPSK and DQPSK modulation. Id. ¶ 124. In PPM, the start and
`stop time of a transmission is varied in response to the information to be
`transmitted, with the time shift being indicative of data bits. Id.
`Patent Owner submits that “varying the start and stop time of a
`transmission of a carrier wave does not result in varying any characteristic of
`the carrier wave.” Prelim. Resp. 33. Patent Owner does not explain,
`however, how the “start and stop time” of a transmission of a carrier wave
`cannot be considered one or more “characteristic[s]” of the carrier wave.
`We acknowledge there is some support in Boer for Patent Owner’s position,
`in Boer’s reference to PPM as “PPM type coding.” Id.; Ex. 1204, col. 4, ll.
`45–48. The fact remains, however, that the term “modulation” is part of the
`descriptive name for PPM – pulse position modulation. Patent Owner has
`not explained sufficiently why pulse position modulation cannot be
`considered a type of modulation method, even if the method might be
`applied for “coding” in Boer. Id.
`Each of independent claims 54 and 58 recites limitations similar to
`those of claim 1. We have reviewed the information presented in the
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`Petition and Patent Owner’s Preliminary Response. We are persuaded there
`is a reasonable likelihood that Petitioner would prevail in its challenge of
`independent claims 1, 54, and 58 and dependent claims 4, 5, 10, 13, 20–22,
`57, 61, 62, 66, 70, and 76–79.
`
`E. Claims 2, 49, 52, 53, and 59 – APA and Boer
`Claim 2, which depends from claim 1, recites that the transceiver is
`configured to transmit a third sequence after the second sequence, wherein
`the third sequence is transmitted in the first modulation method “and
`indicates that communication from the master to the slave has reverted to the
`first modulation method.” Petitioner submits that the recitation is met by
`material in Boer.
`Figure 4 of Boer is reproduced below.
`
`
`
`Figure 4 is said to be a diagram illustrating the format of a data
`message circulating in Boer’s LAN. Ex. 1204, col. 1, ll. 59–60. Message
`200 includes preamble 216 and header 218, always transmitted at the 1
`Mbps rate using DBPSK modulation. Subsequent DATA field 214,
`however, may be transmitted at any one of the four rates 1, 2, 5, or 8 Mbps,
`using the modulation and coding appropriate for the selected rate. Id. at col.
`3, ll. 56–62. SIGNAL field 206 has a first value if DATA field 214 is
`transmitted at the 1 Mbps rate and a second value if the DATA field is
`transmitted at the 2, 5, or 8 Mbps rate. SERVICE field 208 has a first value
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`for the 1 and 2 Mbps rates, a second value for the 5 Mbps rate, and a third
`value for the 8 Mbps rate. Id. at col. 4, ll. 4–11.
`Petitioner submits that the “first sequence” of base claim 1
`corresponds to Boer’s description of SIGNAL field 206 and SERVICE
`FIELD 208. E.g., Pet. 32 (claim chart). According to Petitioner, the “third
`sequence” of claim 2 corresponds to a subsequent transmission of SIGNAL
`field 206 and SERVICE field 208. Pet. 25. Petitioner concludes that the
`subject matter of claim 2 would have been obvious because header 218 is
`always transmitted using DBPSK (the “first” modulation method). Id.
`Petitioner refers to paragraph 143 of the Goodman Declaration for support.
`Id.
`
`Mr. Goodman submits:
`Claim 2 further requires that the third sequence be
`“transmitted in the first modulation method and indicates that
`communication from the master to the slave has reverted to the
`first modulation method.” As discussed above, Header 208,
`which includes SIGNAL 206 and SERVICE 208 fields, [is]
`always transmitted using DBPSK (the “first modulation
`method”). Ex. 1204, 3:56–58.
`
`Therefore, it is my opinion that claim 2 is obvious in
`view of the prior art.
`
`Ex. 1220 ¶¶ 143–144.
`Petitioner has not provided sufficient evidence or explanation in
`support of why the fact that Boer’s SIGNAL and SERVICE fields are
`always transmitted using DBPSK (the “first” modulation method) might
`demonstrate obviousness of the subject matter of claim 2. Petitioner has
`failed to show, in particular, how the SIGNAL and SERVICE fields might
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`be deemed, as alleged, to “indicate” that communication from the master to
`the slave has reverted to the first modulation method, as recited in claim 2.
`Independent claim 49, from which challenged claims 52 and 53
`depend, recites a similar limitation with respect to how a sequence
`“indicates” that communication has reverted to the first modulation method.
`Petitioner relies, again, on Boer’s description of header 218 being always
`transmitted using the “first” modulation method. Pet. 39; Ex. 1220 ¶¶ 192–
`195. Petitioner’s asserted ground of obviousness with respect to claim 49,
`thus, fails for the same reasons as that of claim 2.
`Claim 59, which depends from independent claim 58, also recites a
`third sequence that is transmitted in the first modulation method that
`“indicates” communication from the master to the slave has reverted to the
`first modulation method. Petitioner submits, correctly, that Boer teaches that
`the SIGNAL and SERVICE fields in the header “indicate which modulation
`method is used to transmit DATA field 218.” Pet. 49. “When Boer is
`combined with the APA, it could therefore indicate that communication
`from the master to the slave has reverted to the first modulation method.”
`Id. (citing Ex. 1220 ¶¶ 232–237). Mr. Goodman repeats that “it could
`therefore indicate” that communication has reverted to the first modulation
`method (Ex. 1220 ¶ 237) and concludes, “[t]herefore, it is my opinion that
`claim 59 is obvious in view of the prior art” (id. ¶ 238). Although it appears
`that Petitioner attempts to provide more explanation in its challenge of
`dependent claim 59, as compared with that of claim 2 or 49, we are not
`persuaded there is a reasonable likelihood that Petitioner would prevail in its
`challenge of any of claims 2, 49, and 59.
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`F. Claim 19 – APA and Boer
`Claim 19 depends from claim 13, which depends from claim 1. Claim
`19 recites “wherein the transceiver is configured to receive data from the
`intended destination in the first modulation method when the intended
`destination is the first type of receiver.” The “transceiver” is defined by
`base claim 1 as being “in the role of the master” according to the
`master/slave relationship, for sending transmissions modulated “using at
`least two types of modulation methods” as further specified in the claim.
`Petitioner submits, with respect to claim 19, that Boer “discloses that
`a station 18 (first type) can receive DBPSK (‘first modulation method[’])
`transmissions. See claim 13.” Pet. 36 (claim chart). Petitioner makes plain,
`in its assessment of intervening claim 13, that Boer’s LAN 10 (Fig. 1)
`contains mobile stations 18 of a “first type,” operating at 1 or 2 Mbps data
`rate, and mobile stations 22 of a “second” type, operating at 1, 2, 5, or 8
`Mbps data rate. Id. at 35–36 (claim chart).
`We agree with Patent Owner (Prelim. Resp. 38–39) that, as we noted
`previously, Boer describes stations 18 as not capable of using modulation for
`a “second” type of modulation associated with the higher rates of 5 and 8
`Mbps. See Ex. 1204, col. 2, ll. 19–27 (mobile stations 18-1 and 18-2 (Fig. 1)
`transmit and receive messages at 1 or 2 Mbps, using DBPSK or DQPSK
`modulation, respectively). Thus, alleging that a station 18 can receive a
`“first” (DBPSK) modulation method transmission (Pet. 36) fails to
`demonstrate the obviousness of the transceiver which, according to claim 1,
`sends transmissions using at least two types of modulation methods, further
`being configured to receive data in the first modulation method in
`accordance with the requirements of claim 19. Petitioner provides no further
`
`16
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`REMBRANDT EXHIBIT 2002
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`
`
`IPR2014-00518
`Patent 8,023,580 B2
`
`
`explanation for the discrepancy between claim 19 and the alleged
`corresponding disclosure of Boer. See Pet. 27; Ex. 1220 ¶¶ 159–160.
`For the foregoing reasons, we are not persuaded there is a reasonable
`likelihood that Petitioner would prevail in its challenge of claim 19.
`
`
`
`
`III. CONCLUSION
`The Petition demonstrates a reasonable likelihood of prevailing on the
`obviousness grounds of unpatentability as to claims 1, 4, 5, 10, 13, 20–22,
`54, 57, 58, 61, 62, 66, 70, and 76–79 based on APA and Boer. The Petition
`does not demonstrate a reasonable likelihood of prevailing on the
`obviousness grounds of unpatentability as to claims 2, 19, 49, 52, 53, and 59
`based on APA and Boer.
`The Board has not made a final determination on the patentability of
`any challenged claim.
`
`
`IV. ORDER
`In consideration of the foregoing, it is
`ORDERED that an inter partes review is instituted as to claims 1, 4,
`5, 10, 13, 20–22, 54, 57, 58, 61, 62, 66, 70, and 76–79 of the ’580 patent on
`the obviousness ground based on APA and Boer;
`FURTHER ORDERED that the Petition is denied as to all other
`grounds set forth in the Petition;
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
`partes review of the ’580 patent is instituted with trial commencing on the
`entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R.
`§ 42.4, notice is given of the institution of the trial; and
`
`17
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`REMBRANDT EXHIBIT 2002
`
`
`
`IPR2014-00518
`Patent 8,023,580 B2
`
`
`
`FURTHER ORDERED that the trial is limited to the grounds
`identified immediately above and no other ground is authorized for the ’580
`patent claims.
`
`
`
`
`18
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`REMBRANDT EXHIBIT 2002
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`
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`IPR2014-00518
`Patent 8,023,580 B2
`
`For Petitioner:
`Jeffrey A. Miller
`Daniel G. Cardy
`DICKSTEIN SHAPIRO LLP
`millerj@dicksteinshapiro.com
`cardyd@dicksteinshapiro.com
`Samsung.Rembrandt@dicksteinshapiro.com
`
`
`
`For Patent Owner:
`
`Thomas Engellenner
`Reza Mollaaghababa
`Lana Gladstein
`PEPPER HAMILTON LLP
`engellennert@pepperlaw.com
`mollaaghababar@pepperlaw.com
`gladsteinl@pepperlaw.com
`
`
`
`19
`
`
`REMBRANDT EXHIBIT 2002
`
`
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