`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner
`
`v.
`
`
`
`
`
`MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC,
`Patent Owner
`
`____________
`
`
`
`Case IPR2015-01724
`Patent 5,915,210
`
`____________
`
`
`
`PATENT OWNER MOBILE TELECOMMUNICATIONS
`TECHNOLOGIES, LLC’S PRELIMINARY RESPONSE
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`
`BACKGROUND ............................................................................................. 1
`I.
`INTRODUCTION ........................................................................................... 1
`II.
`III. PROPER CLAIM CONSTRUCTION ............................................................ 3
`A.
`Construction of Independent Claim Terms ........................................... 7
`1.
`“representing substantially the same information as” of
`claims 1, 10, and 19 .................................................................... 7
`“transmit[] [the] second plurality of carrier signals in
`simulcast with the first plurality of carrier signals” of
`claims 1, 10, and 19 .................................................................... 8
`“each of the first plurality of carrier signals representing
`a portion of the information signal substantially not
`represented by others of the first plurality of carrier
`signals” of claims 1, 10, and 19 .................................................. 9
`IV. SUMMARY OF ARGUMENTS .................................................................. 10
`V.
`REFERENCES RELIED UPON BY PETITIONER .................................... 13
`A.
`Saalfrank ............................................................................................. 13
`B.
`Nakamura ............................................................................................ 14
`VI. GROUND 1 – CLAIMS 1, 10 AND 19 ARE NOT ANTICIPATED
`BY SAALFRANK. .......................................................................................... 15
`A.
`Saalfrank does not disclose the “not represented” limitation of
`elements 1(a), 10(a), and 19(a). ........................................................... 15
`Saalfrank does not disclose the “transmit . . . in simulcast”
`limitation of elements 1(b), 10(d), and 19(b). ..................................... 16
`VII. GROUND 2 – CLAIM 19 IS NOT OBVIOUS OVER SAALFRANK
`IN VIEW OF NAKAMURA. .......................................................................... 18
`A.
`Saalfrank in view of Nakamura does not disclose the “not
`represented” limitation of element 19(a). ............................................ 18
`1.
`Saalfrank does not disclose the “not represented”
`limitation of element 19(a). ....................................................... 19
`
`2.
`
`3.
`
`B.
`
`i
`
`
`
`
`
`2.
`
`Nakamura does not disclose the “not represented”
`limitation of element 19(a). ....................................................... 19
`Saalfrank in view of Nakamura does not disclose the “transmit .
`. . in simulcast” limitation of element 19(b). ....................................... 21
`VIII. CONCLUSION .............................................................................................. 22
`
`B.
`
`ii
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`Page
`
`CASES
`Ex parte Frye, 94 USPQ 2d 1072 (BPAI 2010) ...................................................... 20
`Ex parte Papst-Motoren, 1 USPQ2d 1655 (Bd. Pat. App. & Inter. 1986) ................ 4
`Ex Parte Ronald A. Katz Tech. Licensing L.P., Appeal 2008-005127 (BPAI
`Mar. 15, 2010)....................................................................................................... 4
`In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 70 USPQ2d 1827 (Fed.
`Cir. 2004) .............................................................................................................. 5
`In re Kahn, 441 F.3d 977 (Fed. Cir. 2006) .............................................................. 20
`In re Morris, 127 F.3d 1048, 44 USPQ2d 1023 (Fed. Cir. 1997) ............................. 5
`In re Royka, 490 F.2d 981 (CCPA 1974) ................................................................ 18
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) ................................................ 20
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) .............................. 4, 5, 6, 8
`Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298 (Fed. Cir. 1999) ........... 6
`Vitrionics Corp. v. Conceptronic, 90 F.3d 1576 (Fed. Cir. 1996) ............................. 5
`
`OTHER AUTHORITIES
`
`35 United States Code § 102 ...................................................................................... 1
`35 United States Code § 103 ...................................................................................... 1
`35 United States Code § 312(c) ................................................................................. 3
`37 Code of Federal Regulations § 42.104(b)(3) ........................................................ 3
`Manual of Patent Examining Procedure § 2111.01 ................................................... 5
`Manual of Patent Examining Procedure § 2558 ........................................................ 4
`
`iii
`
`
`
`
`I.
`
`BACKGROUND
`
`On August 13, 2015, Samsung Electronics Co., Ltd. filed a Petition for Inter
`
`Partes Review under 37 C.F.R. § 42.100, requesting inter partes review of claims
`
`1, 7-8, 10, 15-17, and 19 of the ’210 Patent. Petitioner asserts that claims 1, 7-8,
`
`10, 15-17, and 19 of the ’210 Patent are unpatentable over the following references
`
`under 35 U.S.C. §§ 102 and 103:
`
`Ground 1 - Claims 1, 7, 10, 16, 17, and 19 as anticipated by Saalfrank; and
`
`Ground 2 - Claims 8, 15, and 19 as obvious over Saalfrank in view of
`
`Nakamura.
`
`The ‘210 Patent, entitled “Method and System for Providing Multicarrier
`
`Simulcast Transmission,” was filed on July 24, 1997 and issued on June 22, 1999.
`
`The ‘210 Patent claims priority to U.S. Application No. 07/973,918, filed
`
`November 12, 1992, U.S. Patent No. 5,590,403 (“the ‘403 patent”).
`
`The ‘210 Patent describes and claims a method and system for providing
`
`multicarrier simulcast transmission.
`
`II.
`
`INTRODUCTION
`
`Patent Owner, Mobile Telecommunications Technologies, LLC, submits this
`
`Preliminary Response to the Petition for Inter Partes Review of claims 1, 7-8, 10,
`
`15-17, and 19 of U.S. Patent No. 5,915,210 (“the ‘210 Patent”). 37 C.F.R. §
`
`42.107.
`
`1
`
`
`
`
`
`Patent Owner respectfully requests that the Board deny the Petition on every
`
`ground alleged by Petitioner for, at least, the following reasons.
`
`First, with regard to Ground 1, German Patent Publication No. DE4102408
`
`(Ex. 1015, “Saalfrank”) does not disclose “each of the first plurality of carrier
`
`signals representing a portion of the information signal substantially not
`
`represented by others of the first plurality of carrier signals,” and “transmit[ a]
`
`second plurality of carrier signals [] in simulcast with the first plurality of carrier
`
`signals.” Thus, claims 1, 10, and 19 of the ‘210 Patent are not anticipated by
`
`Saalfrank.
`
`Second, with regard to Ground 2, Saalfrank does not disclose “each of the
`
`first plurality of carrier signals representing a portion of the information signal
`
`substantially not represented by others of the first plurality of carrier signals” and
`
`“transmitting a second plurality of carrier signals in simulcast with the first
`
`plurality of carrier signals” as recited in claim 19 of the ‘210 Patent. Nakamura et
`
`al., 256 QAM Modem for Multicarrier 400 Mbit/s Digital Radio, 5 IEEE Journal
`
`on Selected Areas in Communications 329 (Apr. 1987) (Ex. 1019, “Nakamura”)
`
`does not cure Saalfrank’s defect and does not disclose or suggest these features.
`
`Thus, claim 19 of the ‘210 Patent is not obvious over Saalfrank in view of
`
`Nakamura.
`
`2
`
`
`
`
`
`Dependent claims 7 and 16-17 are not anticipated by Saalfrank because
`
`independent claims 1 and 10, from which they depend, respectively, are not
`
`anticipated by Saalfrank and because of the additional features these claims recite.
`
`Dependent claims 8 and 15 are not obvious over Saalfrank in view of
`
`Nakamura because independent claims 1 and 10, from which they depend,
`
`respectively, are not obvious over Saalfrank in view of Nakamura and because of
`
`the additional features these claims recite. Therefore, there is no reasonable
`
`likelihood that Petitioner can prevail with regard to claims 1, 7-8, 10, 15-17, and
`
`19 of the ‘210 Patent.
`
`III. PROPER CLAIM CONSTRUCTION
`
`By statute, Petitioner must identify “in writing, and with particularity, each
`
`claim challenged, the grounds on which [each] challenge … is based, and the
`
`evidence that supports the grounds . . . .” 35 U.S.C. § 312(c). This requires a
`
`precise statement on “[h]ow the challenged claim is to be construed.” 37 C.F.R. §
`
`42.104(b)(3).
`
`The Petition fails to set forth how the independent claims are to be
`
`construed. Petitioner construes only three terms, among which one is directed to
`
`means plus function terms of claim 19. Paper 1 at 5-11.
`
`By leaving the entire breadth of the independent claims without an
`
`articulated construction, Petitioner’s asserted grounds for unpatentability are
`
`3
`
`
`
`
`deficient because the basis of Petitioner’s conclusion that a particular claim
`
`element or limitation is taught in the asserted references is unclear.
`
`Petitioner’s approach unfairly forces Patent Owner (as well as the Board) to
`
`guess at how Petitioner is construing any given term. Consequently, on its face,
`
`the Petition is deficient and fails to meet the standard for institution of review. If
`
`the Board does not summarily deny the Petition for this reason, Patent Owner
`
`respectfully submits the following proposed constructions for purposes of this
`
`proceeding.
`
`MPEP 2258 provides that “[i]n a reexamination proceeding involving claims
`
`of an expired patent, claim construction pursuant to the principle set forth by the
`
`court in Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329
`
`(Fed. Cir. 2005) (words of a claim “are generally given their plain and ordinary
`
`meaning” as understood by a person of ordinary skill in the art in question at the
`
`time of the invention) should be applied since the expired claim are not subject to
`
`amendment. See Ex parte Papst-Motoren, 1 USPQ2d 1655 (Bd. Pat. App. & Inter.
`
`1986).”
`
`The ‘210 Patent has expired, and therefore, the claim terms should be
`
`construed according to the principles of Phillips, not under the broadest reasonable
`
`interpretation (BRI) standard. See Ex Parte Ronald A. Katz Tech. Licensing L.P.,
`
`Appeal 2008-005127 (BPAI Mar. 15, 2010).
`
`4
`
`
`
`
`
`The first step in construing claims under Phillips is to “look to the words of
`
`the claims themselves.” Vitrionics Corp. v. Conceptronic, 90 F.3d 1576, 1582
`
`(Fed. Cir. 1996). Second, the specification must be considered when construing
`
`claim terms. Id. “[T]he specification is always highly relevant to the claim
`
`construction analysis. Usually, it is dispositive; it is the single best guide to the
`
`meaning of a disputed term.” Id.
`
`Claim construction under Phillips varies from the BRI standard in at least
`
`two important ways. First, the BRI standard includes a prohibition on reading
`
`limitations in the specification into the claims. In contrast, claim construction
`
`under Phillips does not include this prohibition. For example, “[t]he presumption
`
`that a term is given its plain and ordinary meaning may be rebutted by the
`
`applicant by clearly setting forth a different definition of the term in the
`
`specification. In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1028 (Fed.
`
`Cir. 1997) (the USPTO looks to the ordinary use of the claim terms taking into
`
`account definitions or other “enlightenment” contained in the written description);
`
`But c.f. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369, 70 USPQ2d 1827,
`
`1834 (Fed. Cir. 2004) (“We have cautioned against reading limitations into a claim
`
`from the preferred embodiment described in the specification, even if it is the only
`
`embodiment described, absent clear disclaimer in the specification.”). MPEP
`
`2111.01.
`
`5
`
`
`
`
`
`Second, the BRI standard does not rely heavily on extrinsic evidence. In
`
`contrast, when performing claim construction under Phillips, “it is entirely
`
`appropriate, perhaps even preferable, for a court to consult trustworthy extrinsic
`
`evidence to ensure that the claim construction it is tending to from the patent file is
`
`not inconsistent with clearly expressed, plainly apposite, and widely held
`
`understandings from the pertinent technical field.” Pitney Bowes, Inc. v. Hewlett-
`
`Packard Co., 182 F.3d 1298, 1309 (Fed. Cir. 1999).
`
`As described above, under Phillips the specification must be considered
`
`when construing claim terms. Instead, Petitioner mostly cites to other IPR
`
`proceedings, e.g., IPR2014-01035, Apple Inc. v. Mobile Telecommunications
`
`Technologies, LLC (the “Apple IPR”) and IPR2015-00018, T-Mobile USA Inc. v.
`
`Mobile Telecommunications Technologies, LLC (the “T-Mobile IPR”) (which were
`
`previously terminated), and claim construction orders from district court cases,
`
`e.g., Mobile Telecommunications Technologies, LLC v. Clearwire Corp., Civil
`
`Action No. 2:13-cv-308-JRG-RSP (E.D. Tex.) (“Clearwire Order,” Ex. 1004),
`
`Mobile Telecommunications Technologies, LLC v. Sprint Nextel Corp., Civil
`
`Action No. 2:13-cv-832-JRG-RSP (E.D. Tex.) (“Sprint Order,” Ex. 1005), Mobile
`
`Telecommunications Technologies, LLC v. T-Mobile USA, Inc., et al., Civil Action
`
`No. 2:13-cv-886-JRG-RSP (E.D. Tex.) (“T-Mobile Order,” Ex. 1006), and Mobile
`
`Telecommunications Technologies, LLC v. Leap Wireless International Inc. et al.,
`
`6
`
`
`
`
`Civil Action No. 2:13-cv-885-JRG-RSP (E.D. Tex.) (“Leap Order,” Ex. 1007).
`
`Paper 1, at 5-11.
`
`A. Construction of Independent Claim Terms
`
`1.
`
`“representing substantially the same information as” of
`claims 1, 10, and 19
`
`Challenged claims 1, 10, and 19 recite “each of the second plurality of
`
`carrier signals [] representing substantially the same information as a respective
`
`carrier signal of the first plurality of carrier signals.” Here, “representing
`
`substantially the same information as” means “the first plurality of carrier signals
`
`and the second plurality of carrier signals substantially represent the same
`
`information.” This construction reflects the plain and ordinary meaning of the
`
`words and is supported by the specification. Ex. 1001 at 1:54, 5:26-40 (reproduced
`
`below). Since the “information” conveyed by the second plurality of carrier
`
`signals refer to the same “information” conveyed by the first plurality of carrier
`
`signals, they substantially represent the same information.
`
`7
`
`
`
`
`
`
`
`As a result, under the Phillips standard, the term “representing substantially
`
`the same information as” means “the first plurality of carrier signals and the second
`
`plurality of carrier signals substantially represent the same information.”
`
`2.
`
`“transmit[] [the] second plurality of carrier signals in
`simulcast with the first plurality of carrier signals” of
`claims 1, 10, and 19
`
`Challenged claim 1 recites that the second transmitter is configured “to
`
`transmit a second plurality of carrier signals in simulcast with the first plurality of
`
`carrier signals.”
`
`8
`
`
`
`
`
`Challenged claim 10 similarly recites “transmitting the second plurality of
`
`carrier signals from a second transmitter in simulcast with transmission of the first
`
`plurality of carrier signals from the first transmitter.”
`
`Similar to claims 1 and 10, challenged claim 19 recites “means for
`
`transmitting a second plurality of carrier signals in simulcast with the first plurality
`
`of carrier signals.”
`
`Here, this transmission is “transmitting at the same time the first plurality of
`
`carrier signals from the first transmitter and the second plurality of carrier signals
`
`from the second transmitter.”
`
`The plain and ordinary meaning of simulcast is “to broadcast (a program) by
`
`radio and television at the same time.” http://www.merriam-
`
`webster.com/dictionary/simulcast. Therefore, simulcast means that the first and
`
`second transmitters transmit the first and second plurality of carrier signals,
`
`respectively, at the same time.
`
`3.
`
`“each of the first plurality of carrier signals representing a
`portion of the information signal substantially not
`represented by others of the first plurality of carrier
`signals” of claims 1, 10, and 19
`
`Challenged claims 1, 10, and 19 recite “each of the first plurality of carrier
`
`signals representing a portion of the information signal substantially not
`
`9
`
`
`
`
`represented by others of the first plurality of carrier signals.” Here, this limitation
`
`means “each of the first plurality of carrier signals represent a different portion of
`
`the information signal,” without excluding the possibility of some slight overlap
`
`between the different portions. This construction reflects the plain and ordinary
`
`meaning of the words and is supported by the specification. Ex. 1001 at 13:34-38
`
`(reproduced below).
`
`This passage of the ‘210 Patent describes modulating unique or different
`
`
`
`data streams of an information signal onto each carrier signal.
`
`IV. SUMMARY OF ARGUMENTS
`
`By this response, Patent Owner respectfully submits the following
`
`arguments and supporting evidence.
`
`Claims 1, 10, and 19 of the ‘210 Patent each recite that “each of the first
`
`plurality of carrier signals representing a portion of the information signal
`
`substantially not represented by others of the first plurality of carrier signals.”
`
`Patent Owner construes this limitation to mean that “each of the first plurality of
`
`carrier signals represent a different portion of the information signal.”
`
`10
`
`
`
`
`
`In contrast, Saalfrank only states that individual carriers are each modulated
`
`with one part of the digital data. Nothing in Saalfrank precludes modulating two
`
`carriers with the same part of the digital data. This is excluded by the ‘210 Patent.
`
`Because Saalfrank does not teach that each of the first plurality of carrier
`
`signals represent a different portion of the information signal carrier frequencies
`
`that are offset from one another, as recited in claims 1, 10, and 19 of the ‘210
`
`Patent, these claims are not anticipated by Saalfrank.
`
`Nakamura is cited in the Petition for teaching other features. Specifically,
`
`Nakamura does not cure the defect of Saalfrank, and does not teach that each of
`
`the first plurality of carrier signals represent a different portion of the information
`
`signal carrier frequencies that are offset from one another, as recited in claim 19 of
`
`the ‘210 Patent.
`
`In addition, Patent Owner also submits that Saalfrank does not teach, at
`
`least, element 1(b) of claim 1, element 10(d) of claim 10, and element 19(b) of
`
`claim 19. Elements 1(b), 10(d), and 19(b) recite, among other things, “transmit[ a]
`
`second plurality of carrier signals in simulcast with [] the first plurality of carrier
`
`signals.”
`
`Saalfrank discloses a “procedure for the identification of transmitter or
`
`region in common-wave broadcasting networks.” Ex. 1015 at Abstract. Saalfrank
`
`addresses the problem of making transmitter identification or regional
`
`11
`
`
`
`
`identification possible in a common-wave broadcasting network through the use of
`
`one or more additional carrier frequencies, which differ from each other from
`
`transmitter to transmitter, and from region to region. Id. “Reception of these
`
`additional carrier frequencies making it possible to select at the receiver
`
`specialized regional news.” Id.
`
`Saalfrank discloses that additional carrier frequencies are modulated with
`
`transmitter specific identification information that can be used for the receiver to
`
`identify a transmitter or that a transmitter is located in a specific region. Id.
`
`Therefore, a group of transmitters in a defined region simultaneously transmit the
`
`same content on the same frequency in addition to transmitter specific
`
`identification information that can be identified and, if desired, received by a
`
`receiver. Id. However, since each transmission includes transmitter specific
`
`identification information, the information transmitted by each transmitter differs.
`
`This defect is not cured by the remaining references cited by Petitioner.
`
`Saalfrank does not disclose the “each of the first plurality of carrier signals
`
`representing a portion of the information signal substantially not represented by
`
`others of the first plurality of carrier signals” limitation of elements 1(a), 10(a), and
`
`19(a). Saalfrank only discloses that “by scrambling the digital program data within
`
`the sequence and the allocation to individual carrier frequencies it is prevented that
`
`any transmission errors, caused by fluctuations in field strength, extend over long,
`
`12
`
`
`
`
`temporarily continuous signal sections, and thus they can be corrected more
`
`easily.”
`
`Saalfrank provides no specific disclosure as to how digital program data is
`
`assigned to individual carrier frequencies. Instead, Saalfrank teaches away from
`
`the asserted patent by requiring redundancy between subcarriers. Specifically,
`
`Saalfrank discloses that “error safety is ensured within the transmission capacity of
`
`an individual additional carrier by sufficient redundancy.” Saalfrank therefore
`
`teaches away from the ’210 Patent, which claims that the subcarriers should not
`
`carry substantially redundant information. This defect is not cured by the
`
`Nakamura reference cited by Petitioner.
`
`Supporting evidence for these arguments includes, but is not limited to, the
`
`’210 Patent specification, Ex. 1001, Saalfrank, Ex. 1015, and Nakamura, Ex. 1019.
`
`V. REFERENCES RELIED UPON BY PETITIONER
`
`A.
`
`Saalfrank
`
`Saalfrank is directed to a procedure for use in common-wave radio
`
`broadcasting. Ex. 1015 at 1. For common-wave broadcasting, it is necessary for
`
`the modulation content of
`
`the
`
`transmitted frequencies of
`
`the
`
`individual
`
`broadcasting stations to be identical. When transmitting different signals, in order
`
`to make transmitter or regional identification possible, one or more additional
`
`carrier frequencies, which differ from each other from transmitter to transmitter
`
`13
`
`
`
`
`and region to region, are emitted.
`
`B. Nakamura
`
`Nakamura is directed to a method to achieve good performance of a 256
`
`QAM modem with 400 Mbit/s transmission capacity. Ex. 1019 at Abstract. A
`
`variety of novel techniques include 1) an accurate 256 QAM modulator employing
`
`a new monolithic multiplier IC, 2) a carrier recovery circuit which satisfies such
`
`requirements, 3) a highly stable high-level decision circuit, and 4) a forward error
`
`correcting code. Id.
`
`Since Petitioner acknowledges, in Paper 1 at 33 and 41, that Saalfrank does
`
`not “describe the subcomponents of its transmitter structures with the specificity of
`
`these figures,” Petitioner relies, in Paper 1 at 36-37 and 41-44, on Nakamura for
`
`the specific components of the transmitters that are used in Saalfrank’s system.
`
`Specifically, Petitioner states that Nakamura describes “what is known as a 256
`
`QAM Quadrature Amplitude Modulation (QAM) based transmitter, capable of
`
`modulating 4 carrier signals by an information signal.” Paper 1 at 36.
`
`14
`
`
`
`
`VI. GROUND 1 – CLAIMS 1, 10 AND 19 ARE NOT ANTICIPATED BY
`SAALFRANK.
`
`A.
`
`Saalfrank does not disclose the “not represented” limitation of
`elements 1(a), 10(a), and 19(a).
`
`Patent Owner submits that Saalfrank does not teach, at least, element 1(a) of
`
`claim 1, element 10(a) of claim 10, and element 19(a) of claim 19. Elements 1(a),
`
`10(a), and 19(a) recite, among other things, “each of the first plurality of carrier
`
`signals representing a portion of the information signal substantially not
`
`represented by others of the first plurality of carrier signals.” Above, Patent Owner
`
`construes this limitation to mean “each of the first plurality of carrier signals
`
`represent a different portion of the information signal.”
`
`Petitioner asserts that “with respect to a first plurality of carrier signals
`
`representing a portion of the information signal substantially not represented by
`
`others of the first plurality of carrier signals, Saalfrank describes that ‘[t]he
`
`individual carriers are each modulated with one part of the digital data, with the
`
`modulation content of the individual carriers being identical for all transmitter
`
`stations of the . . . region.’” Paper 1 at 18 (emphasis in the original). As a result,
`
`Petitioner is equating the statement in Saalfrank that individual carriers are each
`
`modulated with one part of the digital data with the ‘210 Patent claim limitation
`
`15
`
`
`
`
`that each of the first plurality of carrier signals represent a different portion of the
`
`information signal.
`
`The Patent Owner submits that Saalfrank does not teach the limitation of the
`
`‘210 Patent, because Saalfrank does not disclose modulating each carrier with a
`
`different part of the digital data. Saalfrank provides no detail regarding the
`
`distribution of data onto subcarriers, and nothing in Saalfrank precludes
`
`modulating two carriers with the same part of the digital data. In addition,
`
`Saalfrank teaches away from the asserted patent by requiring substantial
`
`redundancy between subcarriers. Specifically, Saalfrank discloses that “error
`
`safety is ensured within the transmission capacity of an individual additional
`
`carrier by sufficient redundancy.” Ex. 1015 at 4:¶1. (emphasis added). Saalfrank
`
`therefore teaches away from the ’210 Patent, which claims that the subcarriers
`
`should not carry substantially redundant information. This defect is not cured by
`
`the remaining references cited by Petitioner.
`
`B.
`
`Saalfrank does not disclose the “transmit . . . in simulcast”
`limitation of elements 1(b), 10(d), and 19(b).
`
`Patent Owner also submits that Saalfrank does not teach, at least, element
`
`1(b) of claim 1, element 10(d) of claim 10, and element 19(b) of claim 19.
`
`Elements 1(b), 10(d), and 19(b) recite, among other things, “transmit[ a] second
`
`plurality of carrier signals in simulcast with [] the first plurality of carrier signals.”
`
`16
`
`
`
`
`
`Saalfrank discloses a “procedure for the identification of transmitter or
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`region in common-wave broadcasting networks.” Ex. 1015 at Abstract (emphasis
`
`added). Saalfrank addresses the problem of making transmitter or regional
`
`identification possible in a common-wave broadcasting network through the use of
`
`one or more additional carrier frequencies, which differ from each other from
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`transmitter to transmitter and region to region. Id. “Reception of these additional
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`carrier frequencies making it possible to select at the receiver specialized regional
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`news.” Id.
`
`Saalfrank discloses that additional carrier frequencies are modulated with
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`transmitter specific identification information that can be used for the receiver to
`
`identify a transmitter or that a transmitter is located in a specific region. Id.
`
`Therefore, a group of transmitters in a defined region simultaneously transmit the
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`same content on the same frequency in addition to transmitter specific
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`identification information that can be identified and, if desired, received by a
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`receiver. Id. However, since each transmitter transmits specific identification
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`information, the information transmitted by each transmitter differs. This defect is
`
`not cured by the remaining references cited by Petitioner.
`
`In summary, for anticipation to be found, a cited reference must disclose all
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`elements of the claim within the document. Because Saalfrank does not teach
`
`elements 1(a) and 1(b) of claim 1, elements 10(a) and 10(d) of claim 10, and
`
`17
`
`
`
`
`elements 19(a) and 19(b) of claim 19, Saalfrank does not teach claims 1, 10, and
`
`19 of the ‘210 Patent. Therefore, claims 1, 10, and 19 of the ‘210 Patent are not
`
`anticipated by Saalfrank.
`
`Dependent claims 7 and 16-17 are not anticipated by Saalfrank because
`
`independent claims 1 and 10, from which they depend, respectively, are not
`
`anticipated by Saalfrank and because of the additional features these claims recite.
`
`VII. GROUND 2 – CLAIM 19 IS NOT OBVIOUS OVER SAALFRANK IN
`VIEW OF NAKAMURA.
`
`Pursuant to the requirements for establishing a prima facie case of
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`obviousness under 35 U.S.C. §103, all the claim limitations must be taught or
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`suggested by the applied references. In re Royka, 490 F.2d 981 (CCPA 1974).
`
`A.
`
`Saalfrank in view of Nakamura does not disclose the “not
`represented” limitation of element 19(a).
`
`As noted above, claim 19 of the ‘210 Patent in element 19(a) recites “each of
`
`the first plurality of carrier signals representing a portion of the information signal
`
`substantially not represented by others of the first plurality of carrier signals.”
`
`Above, Patent Owner construes this limitation to mean “each of the first plurality
`
`of carrier signals represent a different portion of the information signal.”
`
`18
`
`
`
`
`
`1.
`
`Saalfrank does not disclose the “not represented” limitation
`of element 19(a).
`
`As explained above with regard to ground 1, the Patent Owner submits that
`
`Saalfrank does not teach the limitation of the ‘210 Patent, because Saalfrank does
`
`not disclose modulating each carrier with a different part of the digital data. In
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`addition, Saalfrank teaches away from the asserted patent by requiring substantial
`
`redundancy between subcarriers. This defect is not cured by the Nakamura
`
`reference cited by Petitioner.
`
`2.
`
`Nakamura does not disclose the “not represented” limitation
`of element 19(a).
`
`Petitioner acknowledges, in Paper 1 at 33 and 41, that Saalfrank does not
`
`“describe the subcomponents of its transmitter structures with the specificity of
`
`these figures.” Petitioner, therefore, relies on Nakamura as describing “one
`
`example of one such transmitter.” Id. at 36-37 and 41-44.
`
`In other words, Nakamura is not relied in the Petition as disclosing that
`
`“each of the first plurality of carrier signals representing a portion of the
`
`information signal substantially not represented by others of the first plurality of
`
`carrier signals.”
`
`Indeed, nowhere does Nakamura disclose or suggest that “each of the first
`
`plurality of carrier signals represent a different portion of the information signal.”
`
`19
`
`
`
`
`Therefore, Nakamura does not cure Saalfrank’s defect, and claim element 19(a) of
`
`the ‘210 Patent is not obvious in view of Saalfrank in view of Nakamura.
`
`In addition, Nakamura cannot be combined with Saalfrank, because
`
`Petitioner has provided no articulated reasoning with some rational underpinning
`
`to support the legal conclusion of obviousness. “[R]ejections on obviousness
`
`grounds cannot be sustained by mere conclusory statements; instead, there must be
`
`some articulated reasoning with some rational underpinning to support the legal
`
`conclusion of obviousness.” Ex parte Frye, 94 USPQ 2d 1072, 1076 (BPAI 2010)
`
`(citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR
`
`Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
`
`In combining Nakamura with Saalfrank, Petitioner has simply stated “it
`
`would have been obvious to one skilled in the art to combine the nationwide
`
`transmission techniques of Saalfrank with the common-wave transmitters of
`
`Nakamura (and the like).” Paper 1 at 37. Simply stating that “it would be
`
`obvious” is not articulated reasoning with some rational underpinning to support
`
`the legal conclusion of obviousness. Therefore, Nakamura cannot be combined
`
`with Saalfrank.
`
`20
`
`
`
`
`
`B.
`
`Saalfrank in view of Nakamura does not disclose the “transmit . . .
`in simulcast” limitation of element 19(b).
`
`As explained above with regard to ground 1, Saalfrank discloses a
`
`“procedure for the identification of transmitter or region in common-wave
`
`broadcasting networks.” Ex. 1015 at Abstract (emphasis added). Saalfrank
`
`addresses the problem of making transmitter identification or regional
`
`identification possible in a common-wave broadcasting network through the use of
`
`one or more additional carrier frequencies, which differ