`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`SAMSUNG ELECTRONICS CO. LTD.; SAMSUNG ELECTRONICS
`AMERICA, INC.; SAMSUNG TELECOMMUNICATIONS AMERICA, LLC;
`AND SAMSUNG AUSTIN SEMICONDUCTOR, LLC;
`Petitioner
`
`v.
`
`REMBRANDT WIRELESS TECHNOLOGIES, LP
`Patent Owner
`___________
`
`Case IPR2015-00118
`Patent 8,023,580
`___________
`
`
`
`
`
`DECLARATION OF DAVID GOODMAN
`
`IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,023,580
`
`
`
`Exhibit 1319 1/29
`
`

`

`
`
`
`
`TABLE OF CONTENTS
`
`INTRODUCTION ......................................................................................... 1
`I.
`EXPERT QUALIFICATIONS AND CREDENTIALS ............................. 1
`II.
`III. BASIS FOR OPINIONS AND MATERIALS REVIEWED ..................... 1
`IV. SUMMARY OF MY OPINIONS ................................................................. 3
`V.
`THE PRIOR ART.......................................................................................... 3
`A.
`Claims 23, 25, 30 And 41 Are Rendered Obvious By Boer ................. 3
`1.
`Claims 23, 25, 30, 41 .................................................................. 3
`1.
`Claims 23, 25, 29 And 30 Are Obvious .................................... 10
`a. Claim 23 .............................................................................. 10
`b. Claims 25 and 30 ................................................................ 11
`2.
`Claim 41 Obvious ..................................................................... 18
`Prior Art (“APA”)In View Of Boer .................................................... 25
`1.
`Claim 29 Is Obvious ................................................................. 25
`
`The Prior Institution Decision In IPR2014-00519 Regarding
`
`B.
`
`Claim 29 is Rendered Obvious Under 35 U.S.C. § 103 By Admitted
`
`
`
`
`
`
`
`
`
`
`i
`
`Exhibit 1319 2/29
`
`

`

`
`
`I, David J. Goodman, declare:
`
`I.
`
`INTRODUCTION
`
`I previously submitted a declaration in the inter partes review
`1.
`
`proceeding brought by Samsung Electronics Co. Ltd., Samsung Electronics
`
`America, Inc., Samsung Telecommunications America, LLC, and Samsung Austin
`
`Semiconductor, LLC (“Petitioners”) regarding U.S. Patent No. 8,023,580 that was
`
`assigned Case No. IPR2014-00519 (Exhibit 1318). My opinions stated in that
`
`declaration remain unchanged.
`
`2.
`
`The present declaration provides additional opinions regarding the
`
`applicability of the prior art references I discussed in my previous declaration to
`
`certain claims for which the Patent Trial and Appeal Board declined to institute a
`
`trial. Therefore, I submit this declaration in support of Petitioner’s petition for
`
`inter partes review of the `580 Patent.
`
`
`3.
`
`I am being compensated for my work in this matter. My
`
`compensation in no way depends upon the outcome of this proceeding.
`
`II. EXPERT QUALIFICATIONS AND CREDENTIALS
` My qualifications and credentials are provided in paragraphs 4-17 of
`4.
`
`my prior declaration. Ex. 1318.
`
`III. BASIS FOR OPINIONS AND MATERIALS REVIEWED
`
`5.
`The opinions set forth in my declaration are based on my personal
`
`knowledge gained from my education, professional experience, and on the review
`
`of the documents and information described in this declaration.
`
`
`6.
`
`In preparation of this declaration, I have studied
`
`
`
`1
`
`Exhibit 1319 3/29
`
`

`

`
`
`a.
`
`b.
`
`c.
`
`d.
`
`U.S. Patent No. 8,023,580 (Ex. 1301);
`
`File History of U.S. Patent No. 8,023,580 and the patents from which
`
`the `580 patent claims priority, as well as the child patent;
`
`U.S. Patent No. 5,706,428 to Boer et al. “Boer;”
`
`P802.11 Draft Wireless LAN Medium Access Control (MAC) and
`
`Physical Layer (PHY) Specification, 23 May 1996;
`
`e.
`
`IEEE Std 802.11-1997( Wireless LAN Medium Access Control (MAC)
`
`and Physical Layer (PHY) Specifications), IEEE Standards Board,
`
`Approved Jun. 26, 1997;
`
`f.
`
`Upender, “Communication Protocols for Embedded Systems,”
`
`Embedded Systems Programming, Vol. 7, Issue 11, November 1994.
`
`g.
`
`Joint Claim Construction Statement, Rembrandt Wireless
`
`Technologies, LP v. Samsung Electronics Co. Ltd, et al, No. 2:13-cv-
`
`00213 (E.D. Tex. 2013);
`
`h.
`
`“The IEEE Standard Dictionary of Electrical and Electronics Terms,”
`
`6th Ed., 1996, p. 662;
`
`i.
`
`j.
`
`k.
`
`“Dictionary Of Communications Technology,” 1995, pp. 259, 404.
`
`U.S. Patent No. 5,537,398 (“Siwiak”);
`
`Infringement Contentions, Rembrandt Wireless Technologies, LP v.
`
`Samsung Electronics Co. Ltd, et al, No. 2:13-cv-00213 (ED. Tex
`
`2013) (July 25, 2013);
`
`
`
`2
`
`Exhibit 1319 4/29
`
`

`

`
`
`l.
`
`Rembrandt’s Opening Claim Construction Brief, Rembrandt Wireless
`
`Technologies, LP v. Samsung Electronics Co. Ltd, et al, No. 2:13-cv-
`
`00213 (ED. Tex 2013) (April 17, 2014);
`
`m.
`
`Tutorial presentation filed by Rembrandt, Rembrandt Wireless
`
`Technologies, LP v. Samsung Electronics Co. Ltd, et al, No. 2:13-cv-
`
`00213 (ED. Tex 2013) (April 17, 2014);
`
`n.
`
`o.
`
`Institution Decision for IPR2014-00518;
`
`Institution Decision for IPR2014-00519.
`
`IV. SUMMARY OF MY OPINIONS
` My opinions are in support of the inter partes review of the `580
`7.
`
`patent claims 23, 25, 29, 30 and 41.
`
`8.
`
`It is my opinion that claims 23, 25, 30 and 41 are rendered obvious
`
`under 35 U.S.C. § 103 by Boer (Ex. 1304), and that claim 29 is rendered obvious
`
`under 35 U.S.C. § 103 by Admitted Prior Art (“APA”) in view of Boer..
`V. THE PRIOR ART
`A.
`Claims 23, 25, 30 And 41 Are Rendered Obvious By Boer
`
`I discuss the scope and content of Boer in paragraphs 71-75 of my
`9.
`
`prior declaration.
`
`1. The Prior Institution Decision In IPR2014-00519 Regarding
`Claims 23, 25, 30, 41
`I have studied the prior `519 Institution Decision. In it, the Board
`
`
`10.
`
`found that Petitioner had not met its burden regarding claims 23 and 41 because
`
`Petitioner did not show that Boer teaches that the (i) “third data” of claim 23, or (ii)
`
`
`
`3
`
`Exhibit 1319 5/29
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`

`

`
`
`“third sequence” of claim 41 indicates that communication “has reverted to the
`
`first modulation method.” In the `519 Inst. Dec., the Board also did not institute a
`
`trial on claims 25, 29 and 30 because they are dependent on claim 23.
`
` The “third data” and “third sequence” recited in these claims are the
`11.
`
`same thing, and are both met by Boer’s SIGNAL field 206 and SERVICE field
`
`208.
`
` Regarding claim 23, the Board stated “Boer’s system may be capable
`12.
`
`of transmitting a first message’s data field using either DQPSK or PPM/DQPSK
`
`followed, a subsequent message’s header field using DBPSK, where the
`
`subsequent message’s header field indicates that the subsequent message’s data
`
`field will be transmitted using DBPSK. However, the Petition has not established
`
`that the specific series of transmissions as recited in independent claim 23 is
`
`explicitly disclosed by or necessarily present in Boer.” `519 Inst. Dec., p. 8. The
`
`Board asserted that the same was true regarding claim 41. Id., at 12-13.
` A person having ordinary skill in the art would have understood that
`13.
`
`Boer teaches that the SIGNAL 206 and SERVICE 208 fields in Boer can indicate
`
`that communication has reverted to the first modulation method.
` Boer teaches transmission of multiple messages 200. Ex. 1304, 1:33-
`14.
`
`40 (“Therefore, according to the present invention, there is provided a method of
`
`operating a wireless local area network station adapted to transmit and receive
`
`messages at a plurality of data rates, wherein said messages include an initial
`
`portion and a data portion, including the steps of: transmitting the initial portion of
`
`a message to be transmitted by a station at a first predetermined one of a first
`
`
`
`4
`
`Exhibit 1319 6/29
`
`

`

`
`
`plurality of data rates…”). The APA also teaches transmission of multiple
`
`sequences. See Ex. 1301 (APA), Figure 2. See also Ex. 1301 (APA), 4:4-50.
` A person having ordinary skill in the art would have known that a
`15.
`
`communication system utilizing data packets such as message 200 in Boer will
`
`transmit multiple sequential packets. Thus, a person having ordinary skill in the art
`
`would have understood that the SIGNAL 206 and SERVICE 208 fields of a second
`
`message 200 is the (i) “third data” of claim 23, and (ii) “third sequence” of claim
`
`41.
`
` Claims 23 and 41 further require that the (i) “third data” of claim 23,
`16.
`
`and (ii) “third sequence” of claim 41 be transmitted “with” (claim 23) or “in
`
`accordance with” (claim 41) the first modulation method. Header 218, which
`
`includes SIGNAL 206 and SERVICE 208 fields, is always transmitted using
`
`DBPSK (the “first modulation method”). Ex. 1304, 3:56-58. The Board
`
`recognized this. See `519 Inst. Dec., p. 5.
` Boer also teaches the requirement in claims 23 and 41 that the recited
`17.
`
`“third data” (claim 23) and “third sequence” (claim 41) indicate that
`
`communication “has reverted to the first modulation method.” A person having
`
`ordinary skill in the art would have known that in Boer, a first message 200 where
`
`the DATA field 214 is transmitted using PPM/DQPSK (“second modulation
`
`method”) could be followed by a second message 200. I note that in claim 23,
`
`DATA field 214 in Boer meets the “second data” limitation while in claim 41,
`
`DATA field 214 meets the “second sequence” limitation.
`
`
`
`5
`
`Exhibit 1319 7/29
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`

`

`
`
`
`
` The second message 200, because it is transmitted after a first 18.
`
`message 200, meets the requirement of claims 23 and 41 that the “third data” and
`
`“third sequence,” respectively, be transmitted “after” the previous sequences
`
`recited by each claim.
`
` A person having ordinary skill in the art would have known that the
`19.
`
`DATA 214 field in second message 200 could be transmitted using DBPSK (“first
`
`modulation method”). Boer teaches that DATA field 214 can be modulated using
`
`any of the modulation methods described therein. See e.g., Ex. 1304, 3:56-62
`
`(“With regard to the message 200, FIG. 4, it should be understood that the
`
`preamble 216 and header 218 are always transmitted at the 1 Mbps rate using
`
`DBPSK modulation. The subsequent DATA field 214, however, may be
`
`transmitted at a selected one of the four possible rates 1, 2, 5 or 8 Mbps, using
`
`the modulation and coding discussed hereinabove.”).
`
`
`
` Boer also teaches that values contained in the SIGNAL field 206 and 20.
`
`SERVICE field 208 indicate which modulation method will be used to transmit
`
`DATA field 214. Ex. 1304, 4:4-11 (“The SIGNAL field 206 has a first
`
`predetermined value if the DATA field 214 is transmitted at the 1 Mbps rate and a
`
`second predetermined value if the DATA field 214 is transmitted at the 2, 5 or 8
`
`Mbps rates. The SERVICE field 208 has a first predetermined value (typically all
`
`zero bits) for the 1 and 2 Mbps rates, a second predetermined value for the 5 Mbps
`
`rate and a third predetermined value for the 8 Mbps rate.”).
`
`
`21.
`
`In the first message 200 in the sequence, DATA field 214 is
`
`modulated with PPM/DQPSK (“second modulation method”) as indicated by
`
`
`
`6
`
`Exhibit 1319 8/29
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`

`

`
`
`SIGNAL field 206 containing a second predetermined value while SERVICE field
`
`208 contains a second (or third) predetermined value. See Ex. 1304, 4:4-11.
`
`22.
`
`In the second message, transmission of the DATA field 214 reverts to
`
`DBPSK (“first modulation method”) as indicated by SIGNAL field 206 containing
`
`a first predetermined value while the SERVICE field 208 contains a first
`
`predetermined value, which Boer states is “typically all zero bits.” See Ex. 1304,
`
`4:4-11.
`
` The first predetermined value in SIGNAL field 206 and the first
`23.
`
`predetermined value in SERVICE field 208, indicate that transmission of the
`
`DATA field 214 “has reverted to the first modulation method,” as required by
`
`claims 23, 25, 29-30 and 41.
` The following figure shows the location in two messages 200 in Boer
`24.
`
`of terms in claims 23 and 41. It also shows how Boer uses the claimed
`
`modulation methods:
`
`
`
`
`
`7
`
`Exhibit 1319 9/29
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`

`

`
`
`
`
` Because Boer teaches that DATA field 214 can be transmitted with 25.
`
`either DBPSK, DQPSK, or PPM/DQPSK, a person having ordinary skill in the art
`
`would have known, and found it obvious, that a transmitted message 200 in which
`
`DATA field 214 was transmitted using PPM/DQPSK could be followed by a
`
`message 200 where the DATA field 214 is transmitted using DBPSK. Indeed,
`
`Boer specifies that such a reversion would occur if ACK messages are not received
`
`correctly. Ex. 1304, Fig 7 (block 522) and 7:41-51 (“Returning to block 508, if an
`
`ACK message is not received correctly and within the predetermined time interval,
`
`then the flowchart proceeds to block 522 where the SC count value is reset to zero
`
`and the data rate is decremented (if the minimum data rate is not already being
`
`used)….”). See the annotated Fig. 7 from Boer (Ex. 1304), below:
`
`
`
`8
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`Exhibit 1319 10/29
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`

`

`
`
`
`
`See also Id. at 8:6-9.
` A person of ordinary skill in the art would have understood that ACK
`26.
`
`messages may not be received correctly when channel conditions change for the
`
`worse, such as when the transceivers are moved apart from one another or when
`
`interference increases. Boer discloses that under such conditions, “the data rate is
`
`decremented.” Based on the flow chart in Fig. 7 of Boer, which I have reprinted
`
`
`
`9
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`Exhibit 1319 11/29
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`

`

`
`
`above, it is seen that if enough ACK messages are not received correctly, the data
`
`rate may be decremented until the data rate reaches 1 Mbps, which is transmitted
`
`using DBPSK.
`
` Whenever this happens, the SIGNAL and SERVICE fields of the first
`27.
`
`1 Mbps packet indicate that communication “has reverted to the first modulation
`
`method,” thereby meeting the “reverted” limitation required by claims 23, 25, 29,
`
`30 and 41.
`
`
`28.
`
`In addition, a person having ordinary skill in the art would have
`
`known, and found it obvious, that following events such as an increase of
`
`interference in the communications channel, the SIGNAL field 206 and SERVICE
`
`field 208 would have contained values indicating that communication “has
`
`reverted to the first modulation method,” as required by claims 23, 25, 29-30 and
`
`41.
`
` Based on this, and for the reasons I discussed in my prior declaration,
`29.
`
`a person having ordinary skill in the art would have found claims 23, 25, 30 and 41
`
`obvious in view of Boer and claim 29 obvious in view of the combination of the
`
`admitted prior art in the `580 patent and Boer.
`
`1. Claims 23, 25, 29 And 30 Are Obvious
`a. Claim 23
`In the `519 Institution Decision, the Board found that “Petitioner has
`
`
`30.
`
`presented sufficient evidence supporting its position that Boer discloses each of the
`
`limitations of claim 23, except for the third data transmission limitation.” `519
`
`
`
`10
`
`Exhibit 1319 12/29
`
`

`

`
`
`Inst. Dec., at p. 7. This limitation requires that “the third data indicates that
`
`communication has reverted to the first modulation method.”
` Boer, however, does teach this “third data transmission limitation,” as
`31.
`
`discussed above in Section V.A.1, and is obvious for the reasons discussed therein.
`
` The following figure shows the location in two messages 200 in Boer
`32.
`
`of terms in claim. 23. It also shows how Boer uses the claimed modulation
`
`methods:
`
`
`
`b. Claims 25 and 30
` Claims 25 and 30 depend from claim 23, and thus were not addressed
`33.
`
`in the `519 Institution Decision. Both claims, however, are rendered obvious by
`
`Boer.
`
` Claim 25 adds a requirement that the communication device comprise
`34.
`
`“a transmitter configured to transmit the first data and the second data.” Boer’s
`
`Figure 3 discloses such a transmitter; RF transmitter 150 in Figure 3, which Boer
`
`teaches is controlled by the state machines in MAC control unit 130. See e.g., Ex.
`
`1304 at 2:63-3:4 and 5:20-25. Thus, Boer renders claim 25 obvious for the same
`
`reasons as for claim 23.
`
`
`
`11
`
`Exhibit 1319 13/29
`
`

`

`
`
`
`
` Claim 30 requires that the “transmission of the second data is 35.
`
`according to a particular quantity of data.” This is also taught by Boer. For
`
`example, Boer teaches that the LENGTH field 210 in Header 218 specifies the
`
`particular quantity of data in the DATA field 214. See e.g., Ex. 1304, Abstract
`
`(“The header includes fields identifying the data rate for the data portion of the
`
`message, and a length field. For a 2 Mbps transmission the length field identifies
`
`the number of bytes in the data field.”); See also, id. at 4:14-20 (“The LENGTH
`
`field 210 contains, if the bit rate is designated as 1 or 2 Mbps, a value
`
`corresponding to the actual number of octets in the DATA field 214. However
`
`for the 5 and 8 Mbps rates, the LENGTH field 210 contains a value which is a
`
`fraction, 2/5 and 2/8, times the actual number of octets in the DATA field 214,
`respectively.”).1 Thus, Boer renders claim 30 obvious for the same reasons as for
`claim 23.
`
` The following claim charts demonstrate how each element of Claims
`36.
`
`23, 25 and 30 is met:
`Claim Language
`[23a] 23. A
`communications
`device,
`comprising:
`
`U.S. Patent 5,706,428 to Boer
`See e.g. Ex. 1304, 1:9-15 (“With a view to obviating the need
`for wired cabling connections between stations in local area
`networks (LANs), wireless local area networks have been
`developed, and are now commercially available. These
`wireless local area networks employ stations, which may be
`data processing devices (such as PCs) having a wireless
`
`1 The LENGTH field is formatted differently for 5 and 8 Mbps rates to allow for
`
`interoperability with devices that only support the 1 and 2 Mbps rates. Ex. 1304,
`
`4:16-24.
`
`
`
`12
`
`Exhibit 1319 14/29
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`

`

`
`
`Claim Language
`
`[23b] a
`processor; and
`
`[23c] a memory
`having stored
`therein
`executable
`instructions for
`execution by the
`processor,
`wherein the
`executable
`instructions
`direct
`transmission of a
`first data with a
`first modulation
`method followed
`by a second data
`with a second
`modulation
`method,
`
`U.S. Patent 5,706,428 to Boer
`communication capability.”);
`1:33-36 (“Therefore, according to the present invention, there
`is provided a method of operating a wireless local area
`network station adapted to transmit and receive messages at a
`plurality of data rates . . . .”).
`See also Figures 1-3 and 8
`See e.g. Ex. 1304, 1:9-15 (“With a view to obviating the need
`for wired cabling connections between stations in local area
`networks (LANs), wireless local area networks have been
`developed, and are now commercially available. These
`wireless local area networks employ stations, which may be
`data processing devices (such as PCs) having a wireless
`communication capability.”).
`Memory with instructions:
`See e.g. Ex. 1304, Figure 7;
`1:9-15 (“With a view to obviating the need for wired cabling
`connections between stations in local area networks (LANs),
`wireless local area networks have been developed, and are
`now commercially available. These wireless local area
`networks employ stations, which may be data processing
`devices (such as PCs) having a wireless communication
`capability.”);
`Transmission of “first data” and “second data:”
`See e.g. Ex. 1304, Fig. 4.
`See e.g. Ex. 1304, 3:42-54 (“Referring now to FIG. 4, there is
`shown the format of a typical message 200 used in the LAN
`10. The message 200 includes a 128-bit SYNC
`(synchronisation) field 202, a 16-bit SFD (start of frame
`delimiter) field 204, an 8-bit SIGNAL field 206 (to be
`explained), an 8-bit SERVICE field 208 (to be explained), a
`16-bit LENGTH field 210 (to be explained), a 16-bit CRC
`check field 212, which provides a CRC check for the portions
`206, 208 and 210, and finally a DATA field 214 which
`comprises a variable number of data "octets", that is 8-bit data
`segments, sometimes referred to as "bytes". The fields 202
`and 204 are together conveniently referred to as a preamble
`216 and the fields 206, 208, 210 and 212 are together
`conveniently referred to as a header 218.”).
`Note: “First data” is SIGNAL field 206 and SERVICE field
`
`
`
`13
`
`Exhibit 1319 15/29
`
`

`

`
`
`Claim Language
`
`[23d] wherein
`the first
`modulation
`method is
`different than the
`second
`modulation
`method,
`
`U.S. Patent 5,706,428 to Boer
`208. “Second data” is Data field 214.
`“First data” transmitted with “first modulation method:”
`See e.g. Ex. 1304, 3:56-58. (“With regard to the message
`200, FIG. 4, it should be understood that the preamble 216
`and header 218 are always transmitted at the 1 Mbps rate
`using DBPSK modulation.”).
`“Second data” follows “first data:”
`See e.g. Ex. 1304, Fig. 4 and 3:59:62 (“The subsequent
`DATA field 214, however, may be transmitted at a selected
`one of the four possible rates 1, 2, 5 or 8 Mbps, using the
`modulation and coding discussed hereinabove.”).
`“Second data” transmitted with “second modulation method:”
`See e.g. Ex. 1304, Abstract (“A wireless LAN includes first
`stations adapted to operate at a 1 or a 2 Mbps data rate and
`second stations adapted to operate at a 1,2,5 or 8 Mbps data
`rate. The 1 and 2 Mbps rates use DBPSK and DQPSK
`modulation, respectively. The 5 and 8 Mbps rates use
`PPM/DQPSK modulation.”). See also Id., 2:23-27 (“When
`operating at the 1 Mbps data rate, DBPSK (differential
`binary phase shift keying) modulation of the RF carrier is
`utilized, and when operating at the 2 Mbps data rate DQPSK
`(differential quadrature phase shift keying) modulation of
`the RF carrier is utilized.”);
`2:37-44 (“The stations 22 can operate at a 1 Mbps or a 2
`Mbps data rate, using the same modulation and DSSS coding
`as the stations 18, and in addition can also operate at two
`higher data rates, namely 5 Mbps and 8 Mbps. These 5 and 8
`Mbps data rates utilize PPM/DQPSK (pulse position
`modulation--differential quadrature phase shift keying) in
`combination with the 11-chip Barker code mentioned
`hereinabove.”).
`See e.g. Ex. 1304, Abstract (“A wireless LAN includes first
`stations adapted to operate at a 1 or a 2 Mbps data rate and
`second stations adapted to operate at a 1,2,5 or 8 Mbps data
`rate. The 1 and 2 Mbps rates use DBPSK and DQPSK
`modulation, respectively. The 5 and 8 Mbps rates use
`PPM/DQPSK modulation.”);
`2:23-27 (“When operating at the 1 Mbps data rate, DBPSK
`(differential binary phase shift keying) modulation of the
`RF carrier is utilized, and when operating at the 2 Mbps data
`
`
`
`14
`
`Exhibit 1319 16/29
`
`

`

`
`
`Claim Language
`
`[23e] wherein
`the first data
`comprises an
`indication of an
`impending
`change from the
`first modulation
`method to the
`second
`modulation
`method,
`
`U.S. Patent 5,706,428 to Boer
`rate DQPSK (differential quadrature phase shift keying)
`modulation of the RF carrier is utilized.”); and
`2:37-44 (“The stations 22 can operate at a 1 Mbps or a 2
`Mbps data rate, using the same modulation and DSSS coding
`as the stations 18, and in addition can also operate at two
`higher data rates, namely 5 Mbps and 8 Mbps. These 5 and 8
`Mbps data rates utilize PPM/DQPSK (pulse position
`modulation--differential quadrature phase shift keying) in
`combination with the 11-chip Barker code mentioned
`hereinabove.”).
`See e.g. Ex. 1304, 1:33-43 (“Therefore, according to the
`present invention, there is provided a method of operating a
`wireless local area network station adapted to transmit and
`receive messages at a plurality of data rates, wherein said
`messages include an initial portion and a data portion,
`including the steps of: . . . including in said initial portion a
`data rate identification segment identifying a selected one
`of a second plurality of data rates, at which said data
`portion is to be transmitted . . . .”);
`4:4-11 (“The SIGNAL field 206 has a first predetermined
`value if the DATA field 214 is transmitted at the 1 Mbps rate
`and a second predetermined value if the DATA field 214 is
`transmitted at the 2, 5 or 8 Mbps rates. The SERVICE field
`208 has a first predetermined value (typically all zero bits) for
`the 1 and 2 Mbps rates, a second predetermined value for the
`5 Mbps rate and a third predetermined value for the 8 Mbps
`rate.”);
`6:5-17 (“In a station 22 which is to transmit a message, . . .
`[t]he rate selector 142 uses the SIGNAL and SERVICE fields
`206, 208 to decide whether or not the encoder 146 should
`switch to the 2, 5 or 8 Mbps modes. If rate switching is to
`take place, then after the last bit of the header 218 has passed
`through, the rate selector 142 provides a control signal to the
`encoder, to switch from operation in the 1 Mbps DBPSK
`mode to the 2 Mbps DQPSK mode, 5 Mbps PPM/QPSK
`mode or the 8 Mbps PPM/QPSK mode, whereby the DATA
`field 214 is encoded in the selected manner.”); and
`6:18-21 (“In a station 22 which is receiving a message, the
`rate selector 164 uses the SIGNAL and SERVICE fields
`206, 208 to determine whether to remain in the 1 Mbps
`mode or switch to the 2,5 or 8 Mbps mode.”).
`
`
`
`15
`
`Exhibit 1319 17/29
`
`

`

`
`
`Claim Language
`[23f] wherein the
`executable
`instructions
`direct
`transmission of a
`third data with
`the first
`modulation
`method after the
`second data, and
`
`[23g] wherein
`the third data
`indicates that
`communication
`has reverted to
`the first
`modulation
`method.
`
`U.S. Patent 5,706,428 to Boer
`“Direct Transmission Of A Third Data With The First
`Modulation Method After The Second Data:”
`APA teaches transmission of multiple sequences. See Ex.
`1301 (APA), Figure 2. See also Ex. 1301 (APA), 4:4-50.
`Boer also teaches transmission of multiple sequences. Ex.
`1304, 1:33-40 (“Therefore, according to the present invention,
`there is provided a method of operating a wireless local area
`network station adapted to transmit and receive messages
`at a plurality of data rates, wherein said messages include
`an initial portion and a data portion, including the steps of:
`transmitting the initial portion of a message to be transmitted
`by a station at a first predetermined one of a first plurality of
`data rates…”).
`The SIGNAL field 206 and SERVICE field 208 of a
`subsequently transmitted message is the “third data.”
`SIGNAL field 206 and SERVICE field 208 (within header
`218) transmitted using DBPSK (first modulation method):
`3:56-58. (“With regard to the message 200, FIG. 4, it should
`be understood that the preamble 216 and header 218 are
`always transmitted at the 1 Mbps rate using DBPSK
`modulation.”);
`Ex. 1304, Abstract, (“All transmitted messages start with a
`preamble and header at the 1 Mbps rate. The header includes
`fields identifying the data rate for the data portion of the
`message, and a length field. For a 2 Mbps transmission the
`length field identifies the number of bytes in the data field. For a
`5 or 8 Mbps the length field identifies the number of bytes in the
`data field which, if transmitted at 2 Mbps, would take the same
`transmission time of the data field, and is thus a fraction 2/5 or
`2/8 of the actual number of the bytes.”);
`2:6-15 (“Referring first to FIG. 1, there is shown a preferred
`embodiment of a wireless LAN (local area network) 10 in
`which the present invention is implemented. The LAN 10
`includes an access point 12, which serves as base station, and
`is connected to a cable 14 which may be part of a backbone
`LAN (not shown), connected to other devices and/or
`networks with which stations in the LAN 10 may
`communicate. The access point 12 has antennas 16 and 17
`for transmitting and receiving messages over a wireless
`communication channel.”);
`
`
`
`16
`
`Exhibit 1319 18/29
`
`

`

`
`
`Claim Language
`
`Claim 25
`25. The device
`of claim 23,
`further
`comprising a
`transmitter
`configured to
`transmit the first
`data and the
`second data.
`
`U.S. Patent 5,706,428 to Boer
`3:56-62 (“With regard to the message 200, FIG. 4, it should
`be understood that the preamble 216 and header 218 are
`always transmitted at the 1 Mbps rate using DBPSK
`modulation. The subsequent DATA field 214, however,
`may be transmitted at a selected one of the four possible
`rates 1, 2, 5 or 8 Mbps, using the modulation and coding
`discussed hereinabove.”);
`4:4-11 (“The SIGNAL field 206 has a first predetermined
`value if the DATA field 214 is transmitted at the 1 Mbps
`rate and a second predetermined value if the DATA field 214
`is transmitted at the 2, 5 or 8 Mbps rates. The SERVICE field
`208 has a first predetermined value (typically all zero bits) for
`the 1 and 2 Mbps rates, a second predetermined value for the
`5 Mbps rate and a third predetermined value for the 8 Mbps
`rate. .”);
`Fig. 7;
`7:41-51 (“Returning to block 508, if an ACK message is not
`received correctly and within the predetermined time
`interval, then the flowchart proceeds to block 522 where the
`SC count value is reset to zero and the data rate is
`decremented (if the minimum data rate is not already being
`used)….”); and
`8:6-9 (“If a station 22 doesn't receive the expected ACK
`message in return correctly and in due time, it will retransmit
`the original message packet at a lower data rate.”).
`U.S. Patent 5,706,428 to Boer
`See e.g. Ex. 1304, 2:63-3:4 (“Referring now to FIG. 2, there
`is shown a functional block diagram illustrating, for a station
`18, the interconnection of the functional blocks which relate
`to the implementation of the present invention. The block 30
`represents a MAC (medium access control) control unit which
`includes four state machines, namely a MAC control state
`machine C-MST 32, a MAC management state machine M-
`MST 34, a transmitter state machine T-MST 36 and a receiver
`state machine R-MST 38.”);
`5:20-25 (“The MAC control state machine C-MST 132
`handles the control of the transmitter and receiver state
`machines T-MST 136 and R-MST 138. The transmit state
`machine T-MST 136 handles the timed control and the
`forwarding of the frames 200 (FIG.4) over the line 140 for
`transmission.”); and
`
`
`
`17
`
`Exhibit 1319 19/29
`
`

`

`
`
`Claim Language
`
`Claim 30
`30. The device
`of claim 23,
`wherein
`transmission of
`the second data
`is according to a
`particular
`quantity of data.
`
`U.S. Patent 5,706,428 to Boer
`FIG. 2 (RF TRANSMITTER 50).
`U.S. Patent 5,706,428 to Boer
`See e.g. Ex. 1304, Abstract (“The header includes fields
`identifying the data rate for the data portion of the message,
`and a length field. For a 2 Mbps transmission the length field
`identifies the number of bytes in the data field.”); and
`4:14-20 (“The LENGTH field 210 contains, if the bit rate is
`designated as 1 or 2 Mbps, a value corresponding to the actual
`number of octets in the DATA field 214. However for the 5
`and 8 Mbps rates, the LENGTH field 210 contains a value
`which is a fraction, 2/5 and 2/8, times the actual number of
`octets in the DATA field 214, respectively.”).
`
`2. Claim 41 Obvious
`
`
` Claim 41 depends from claim 40. The Board has already instituted 37.
`
`inter partes review on the grounds that claim 40 is unpatentable under 35 U.S.C. §
`
`102(e), as anticipated by Boer. See `519 Inst. Dec. at 11, 16. The Board, however,
`
`found that “…Petitioner has not demonstrated sufficiently that Boer discloses ‘the
`
`transceiver is configured to transmit a third sequence after the second sequence,
`
`wherein the third sequence is transmitted in accordance with the first modulation
`
`method and indicates that a subsequent communication has reverted to the first
`
`modulation method,’ as recited in dependent claim 41.”
`
` Boer, however, does teach this “third sequence” limitation, as
`38.
`
`discussed above in Section V.A.1, and is obvious for the reasons discussed therein.
` The following figure shows the location in two messages 200 in Boer
`39.
`
`of terms in claim 41. It also shows how Boer uses the claimed modulation
`
`methods:
`
`
`
`18
`
`Exhibit 1319 20/29
`
`

`

`
`
`
`
` The following claim charts demonstrate that Boer renders claim 41
`40.
`
`obvious:
`Claim Language
`[40a] 40. A
`device that
`transmits in
`accordance with
`a first
`modulation
`method and a
`second
`modulation
`method that is
`different than the
`first modulation
`method, said
`device
`comprising;
`
`U.S. Patent 5,706,428 to Boer
`
`Device:
`See e.g. Ex. 1304, 1:9-15 (“With a view to obviating the need
`for wired cabling connections between stations in local area
`networks (LANs), wireless local area networks have been
`developed, and are now commercially available. These
`wireless local area networks employ stations, which may be
`data processing devices (such as PCs) having a wireless
`communication capability.”);
`1:33-36 (“Therefore, according to the prese