Paper 9
`Entered: February 16, 2016
`
`Trials@uspto.gov
`571-272-7822
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`
`
`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 IPR2015-01725
`Patent 5,915,210
`____________
`
`Before MEREDITH C. PETRAVICK, SCOTT A. DANIELS, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`DECISION
`Decision Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`Entered: February 16, 2016
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`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 IPR2015-01725
`Patent 5,915,210
`____________
`
`Before MEREDITH C. PETRAVICK, SCOTT A. DANIELS, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`DECISION
`Decision Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
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`IPR2015-01725
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`I.
`
`INTRODUCTION
`
`A. Background
`Petitioner, Samsung Electronics Co., Ltd., filed a Petition to institute
`an inter partes review of claims 1, 7, 8, 10, 15–17, and 19 of U.S. Patent No.
`5,915,210 (“the ’210 patent”). Paper 1 (“Pet.”). Patent Owner, Mobile
`Telecommunications Technologies, LLC, timely filed a Preliminary
`Response. Paper 8 (“Prelim. Resp.”).
`We have authority to determine whether to institute an inter partes
`review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Upon consideration
`of the evidence in the Petition and the Preliminary Response, we determine
`that Petitioner has not established a reasonable likelihood of prevailing on
`the claims challenged in the Petition. Accordingly, we do not institute an
`inter partes review of any of the challenged claims in the ’210 patent.
`B. Additional Proceedings
`Currently, the ’210 patent is also challenged in IPR2015-01724.
`Petitioner states that the ’210 patent is asserted against Petitioner in the U. S.
`District Court for the Eastern District of Texas, Mobile Telecommunications
`Technologies, LLC v. Samsung Electronics Co., Case No. 2:15-CV-183.
`Pet. 1. Petitioner also notes that the ’210 patent is asserted against other
`parties in at least (1) Mobile Telecommunications Technologies, LLC v.
`Apple, Inc., Case No. 2:13-CV-258; (2) Mobile Telecommunications
`Technologies, LLC v. Leap Wireless International, Inc., Case No. 2:13-CV-
`885; (3) Mobile Telecommunications Technologies, LLC v. T-Mobile USA,
`Inc., Case No. 2:13-CV-886; and (4) Mobile Telecommunications
`Technologies, LLC v. AT&T Mobility LLC, Case No. 2:14-CV-897, all in the
`Eastern District of Texas. Id. at 1–2.
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`Petitioner states further that the ’210 patent was also challenged in
`previous inter partes review proceedings, namely Apple Inc. v. Mobile
`Telecommunications Technologies, LLC, Case IPR2014-01036 (PTAB filed
`June 27, 2014); and T-Mobile USA, Inc. v. Mobile Telecommunications
`Technologies, LLC, Case IPR2015-00015 (PTAB filed Oct. 3, 2014).1 Id.
`at 2.
`
`C. The ’210 Patent
`The ’210 patent (Ex. 1001), titled “Method and System for Providing
`Multicarrier Simulcast Transmission,” describes a system for two-way
`communication between a network operations center and a mobile device
`located somewhere in a wide geographic region. Ex. 1001, Abstract. The
`’210 patent explains that an important aspect of the invention is to “provide
`a communication system with wide area coverage and high message
`throughput while minimizing frequency bandwidth usage.” Id. at 4:46–48.
`Annotated Figure 6 of the ’210 patent, reproduced below, illustrates
`the major components of the communication system for sending a data
`signal between networks operation center 600, highlighted in yellow, and
`mobile unit 624, highlighted in green. Id. at 8:46–48.
`
`
`1 IPR2014-01036 and IPR2015-00015 were both terminated pursuant to
`settlement agreements between the respective parties. See T-Mobile USA,
`Inc. v. Mobile Telecomms. Techs., LLC, Case IPR2015-00015 (PTAB filed
`Oct. 3, 2014) (Paper 14); Apple Inc. v. Mobile Telecomms. Techs., LLC,
`Case IPR2014-01036 (PTAB filed June 27, 2014) (Paper 20).
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`Annotated Figure 6 is a schematic diagram of a communication
`system.
`As depicted by Figure 6 of the ’210 patent, above, the communication
`system provides network operations center 600 connected to satellite uplink
`602, which in turn, provides data to satellite 606. Id. at 8:48–51. Satellite
`606 communicates the received data to several satellite downlink stations
`608, 610. Id. at 8:52–53. Satellite downlink stations 608, 610 send the data
`signal to geographically spaced apart base transmitters 612, 614 which emit
`the signal via antennas 620 and 622, respectively, in different geographic
`defined regions, i.e., “zones,” for reception by mobile unit 624. Id. at 8:62–
`9:5. Dash line 660 indicates the boundary between zones 1 and 2, and each
`zone may include additional base transmitters 613, 615, respectively, as
`shown in Figure 6. Id. at 8:62–9:56. Mobile unit 624, shown in zone 1, is a
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`portable communication device, for instance, a pager, and can both receive
`and transmit a signal. Id. at 9:6–11.
`
`Observing Figure 6 of the ’210 patent, above, in one embodiment of
`the invention base transmitters 612, 614 receive a data signal from satellite
`606 via down link stations 608, 610, and then transmit the same data signal
`at the same time, i.e., in simulcast, in both zones 1 and 2, to be received by
`mobile unit 624. Id. at 10:35–41. The ’210 patent explains that this method
`is “useful to deliver the message if, for example, the location of mobile unit
`624 in zone 1 or zone 2 is unknown and broad coverage is desired.” Id. at
`10:41–44 (emphasis added). In another embodiment, if for instance the
`location of mobile unit 624 is known to be in zone 1, base transmitter 614
`transmits a data signal within zone 1, and at the same time, base transmitter
`612 can transmit different data for a different mobile unit within zone 2 to
`“increase information throughput and system efficiency.” Id. at 10:45–58.
`D. Illustrative Claim
`Claims 1, 10 and 19 are independent. Claim 1 illustrates the claimed
`subject matter and is reproduced below:
`1. A multi-carrier simulcast transmission system for transmitting
`in a desired frequency band at least one message contained in an
`information signal, the system comprising:
`a first transmitter configured to transmit a first plurality of
`carrier signals within the desired frequency band, each
`of the first plurality of carrier signals representing a
`portion of the information signal substantially not represented
`by others of the first plurality of carrier signals; and
`a second transmitter, spatially separated from the first
`transmitter, configured to transmit a second plurality of
`carrier signals in simulcast with the first plurality of
`carrier signals, each of the second plurality of carrier
`signals corresponding to and representing substantially
`the same information as a respective carrier signal of
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`the first plurality of carrier signals.
`
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`E. The Alleged Ground of Unpatentability
`Petitioner contends that the challenged claims are unpatentable on the
`following specific ground.2
`
`References
`Witsaman3 and Bingham4
`
`
`Basis
`§ 103
`
`Claims Challenged
`1, 7, 8, 10, 15–17, and 19
`
`CLAIM CONSTRUCTION
`
`II.
`A. Legal Standard
`The ’210 patent is expired, and “the Board’s review of the claims of
`an expired patent is similar to that of a district court’s review.” In re
`Rambus Inc., 694 F.3d 42, 46 (Fed. Cir. 2012). In this context, claim terms
`generally are given their ordinary and customary meaning, as understood by
`a person of ordinary skill in the art, at the time of the invention, taking into
`consideration the language of the claims, the specification, and the
`prosecution history of record because the expired claims are not subject to
`amendment. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir.
`2005) (en banc).
`The challenged claims also include means-plus-function limitations.
`The Office interprets limitations arising under 35 U.S.C. § 112, paragraph
`
`2 Petitioner supports its challenge with a Declaration of Dr. Apostolos K.
`Kakaes, Ph.D. (Ex. 1003, “Kakaes Decl.”). See infra.
`3 Ex. 1012, U.S. Patent No. 5,365,569 (Nov. 15, 1994).
`4 Ex. 1015, John A.C. Bingham, Multicarrier Modulation for Data
`Transmission: An Idea Whose Time Has Come, IEEE COMM. MAG., May
`1990, at 5.
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`six, in light of the corresponding structure, material or acts described in the
`specification. In re Donaldson Co., 16 F.3d 1189, 1193 (Fed. Cir. 1994)
`(“[P]aragraph six applies regardless of the context in which the
`interpretation of means-plus-function language arises, i.e., whether as part of
`a patentability determination in the PTO or as part of a validity or
`infringement determination in a court.”).
`
`1. A . . .transmitter
`Petitioner asserts that “a . . . transmitter” as recited in independent
`claims 1 and 10 should be given its plain and ordinary meaning “with the
`understanding that transmitting multiple signals or outputs from a single
`structural unit is not itself sufficient to constitute a plurality of transmitters.”
`Pet. 5 (citing Ex. 1004, 6). After reviewing the Specification, and observing
`that Figure 13 discloses a schematic diagram of a base transmitter, we
`understand that a transmitter can include a plurality of modulators 1306,
`1308, 1310, 1314, each producing a respective carrier signal F1, F2, F3, and
`Fn. Ex. 1001, 15:49–63. The carrier frequencies from the modulators are
`combined by combiner 1316 into a single output signal, amplified, and then
`broadcast by antenna 1320. Id. at 15:67–16:13. Claim 1 also specifies that a
`transmitter (singular) “transmit[s] a . . . plurality of carrier signals.”
`We find Petitioner’s contention that “a . . . transmitter” be given its
`plain and ordinary meaning, to be reasonable. To be consistent with the
`usage of this term in the Specification and claim language of the ’210 patent,
`the plain and ordinary meaning of “transmitter” (singular) includes a device
`capable of transmitting a plurality of carrier signals combined as a single
`output.
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`2. Means for transmitting a [] plurality of carrier signals
`Independent claim 19 includes the limitations, “means for transmitting
`a first plurality of carrier signals,” and “means for transmitting a second
`plurality of carrier signals.” Petitioner proposes that under the Phillips
`standard, the function for the “means for transmitting” is “transmitting a first
`plurality of carrier signals within the desired frequency band.” Pet. 9. For
`the second plurality of carrier signals Petitioner proposes the function is
`“transmitting a second plurality of carrier signals in simulcast with the first
`plurality of carrier signals.” Id. Patent Owner does not provide a
`construction for this phrase. See Prelim. Resp. 7–10.
`For the first limitation, Petitioner asserts that the corresponding
`structure is either:
`“base transmitter 1300 including data input 1302, control logic
`1304, modulators 1306-1314, combiner 1316, power amplifier
`1318, and an antenna 1320, as depicted in Figure 13; and
`equivalents thereof” or “base transmitter 1400 including data
`input 1402, control logic 1404, modulators 1406-1414, power
`amplifiers 1416-1424, combiner 1426, and an antenna 1428, as
`depicted in Figure 14; and equivalents thereof.”
`Id. at 10. For the second limitation, Petitioner asserts that the corresponding
`structure is either:
`“at least a second geographically separated base transmitter
`1300 including data input 1302, control logic 1304, modulators
`1306-1314, combiner 1316, power amplifier 1318, and an
`antenna 1320, as depicted in Figure 13; and equivalents
`thereof” or “at least a second geographically separated base
`transmitter 1400 including data input 1402, control logic 1404,
`modulators 1406-1414, power amplifiers 1416-1424, combiner
`1426, and an antenna 1428, as depicted in Figure 14; and
`equivalents thereof.”
`
`Id.
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`The presence of the term “means for” in these limitations
`presumptively invokes 35 U.S.C. § 112, paragraph six. CCS Fitness, Inc. v.
`Brunswick Corp., 288 F.3d 1359, 1369 (Fed. Cir. 2002). Absent evidence to
`the contrary, we agree that the claim should be construed under 35 U.S.C.
`§ 112, paragraph six, and we also agree with Petitioner’s identification of the
`functions, as they are essentially the specific functions unambiguously
`expressed in claim 19 for each limitation. Our review of the Specification
`reveals that the structure disclosed for performing the function of
`“transmitting a first plurality of carrier signals” is base transmitter 1300, and
`alternatively, base transmitter 1400 as shown in Figures 13 and 14. Ex.
`1001, 15:47–16:30; Figs. 13–14. Similarly, the Specification is
`unambiguous that embodiments of the base transmitter, for example, base
`transmitter 1300 and 1400 are “means for transmitting a second plurality of
`carrier signals,” as recited in claim 19. Id. at 8:51–64, 15:47–16:30; Figs. 6,
`13–14. As pointed out by Petitioner, the Specification also clearly indicates
`that each of the plurality of base transmitters are “spatially separated” across
`a geographic area. Id. at 8:63–9:5, Fig. 6. Although the Specification does
`not use specifically the term “geographic separation,” in the context of the
`disclosure of network transmitters and receivers having the “capability to
`uniformly cover a geographic region,” based on the figures and the plain
`meaning of the written description in the ’210 patent, it is a reasonable
`interpretation that spatial separation is, in fact, geographic separation. See
`id. at 1:26–27.
`We find Petitioner’s proposed construction to be reasonable. For
`purposes of this Decision, the corresponding structure for “means for
`transmitting a first plurality of carrier signals” includes base transmitter
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`1300 having data input 1302, control logic system 1304, a plurality of
`modulators 1306, 1308 . . . n, combiner 1316 for combination of modulated
`signals into a single output signal, amplifier 1318 and broadcast antenna
`1320 as shown and described in Figure 13 of the ’210 patent and
`equivalents. Id. at 15:47–16:13–14, Fig. 13. The corresponding structure
`also includes base transmitter 1400 having data input 1402, control logic
`system 1404, a plurality of modulators 1406, 1408 . . .n, a plurality of
`amplifiers 1416, 1418 . . .n, combiner 1426 for combination of the
`modulated and amplified signals into a single output signal, and broadcast
`antenna 1428 as shown and described in Figure 14 of the ’210 patent and
`equivalents. Id. at 16:14–30, Fig.14. We identify the corresponding
`structure for “means for transmitting a second plurality of carrier signals” as
`a second geographically separated base transmitter including the same
`structure described above with respect to the embodiments of Figures 13 and
`14 of the ’210 patent and equivalents. Id. at 15:47–16:30, Figs. 13, 14.
`3. Means for modulating
`Claim 7 depends directly from claim 1 and includes the phrases
`“means for modulating the first plurality of carrier signals,” and “means for
`modulating the second plurality of carrier signals.” We determine for
`purposes of this Decision that these phrases should also be construed under
`35 U.S.C. § 112, paragraph six, apart from the term “transmitter.” The
`function of “means for modulating” is explicit in the claim language as to
`modulating carrier signals and we identify the corresponding structure as a
`modulator as shown and described in Figures 11, 13, and 14 and its
`equivalents. Ex. 1001, 15:49–16:30, Figs. 11, 13, 14.
`
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`4. In simulcast
`Independent claims 1, 10, and 19 recite the phrases “transmit . . . in
`simulcast,” and, “transmitting . . . in simulcast.” According to Petitioner, the
`term “in simulcast” means: “at the same time.” Pet. 10. Patent Owner does
`not dispute this interpretation. Prelim. Resp. 9..
`The Specification describes that “[g]enerally, simulcast technology
`provides multiple transmitters, operating on substantially the same
`frequencies and transmitting the same information positioned to cover
`extended areas.” Ex. 1001, 1:52–55. Although the Specification does not
`specifically state that the information is transmitted “at the same time,” an
`ordinary meaning of the word “simulcast” as used throughout the written
`description is, “at the same time.” See id. at 1:46–65, 6:1–21, Figs. 7, 26. A
`common dictionary definition of “simulcast” is “:to broadcast (a program)
`by radio and television at the same time.” http://www.merriam-
`webster.com/dictionary/simulcast (last visited Feb. 9, 2016).
`Accordingly, for purposes of this Decision, the plain meaning of
`“transmitting . . . in simulcast,” is: transmitting at the same time.
`5. Representing substantially the same information
`Patent Owner contends that the phrase “representing substantially the
`same information” as recited in claims 1, 10, and 19 means, “the first
`plurality of carrier signals and the second plurality of carrier signals
`substantially represent the same information.” Prelim. Resp. 7. This
`asserted claim construction by Patent Owner is, however, merely a
`restatement of the express claim language essentially interchanging the
`words “representing” and “substantially.” We are not persuaded, on the
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`record before us at this point in the proceeding, that this phrase needs to be
`construed.
`6. 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 asserts that the phrase “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” as recited in
`claims 1, 10, and 19 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.”
`Prelim. Resp. 9–10. Patent Owner does not explain sufficiently why this
`phrase needs interpretation. We are cognizant that the word “different” in
`the proposed construction may have the same or similar meaning as the
`phrase “not represented by others . . .,” but the plain meaning of the claim is
`readily apparent on its face, that is, by and large unlike portions of the
`information signal are carried by each carrier signal. Also, we understand
`from the claim language that the carrier signals are not excluded from
`carrying some of the same information. It is well settled that the term
`“substantially” is often used to mean largely but not wholly what is
`specified. See, e.g., York Prods., Inc. v. Cent. Tractor Farm & Family Ctr.,
`99 F.3d 1568, 1572–73 (Fed. Cir. 1996); see also Amhil Enters. Ltd. v.
`Wawa, Inc., 81 F.3d 1554, 1562 (Fed. Cir. 1996). Accordingly, on the
`record before us, we are not persuaded this phrase requires construction.
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` ANALYSIS
`III.
`We turn now to Petitioner’s asserted grounds of unpatentability to
`determine whether Petitioner has met the threshold standard of 35 U.S.C.
`§ 314(a).
`
`A. Claims 1, 7, 8, 10, 15– 17, and 19 – Obviousness over
`Witsaman and Bingham
`Petitioner asserts that claims 1, 7, 8, 10, 15–17, and 19 would have
`been obvious over Witsaman and Bingham. Pet. 13–42. Petitioner has not
`established a reasonable likelihood of prevailing on its assertion that claims
`1, 7, 8, 10, 15–17, and 19 are obvious for the reasons explained below.
`1. Overview of Witsaman
`Witsaman discloses a paging system whereby subscribers are
`provided with a radio receiver, i.e., a pager device, which receives a
`message, i.e., a page, broadcast by the system. Ex. 1012, 1:5–32. The
`broadcast system as illustrated in Figure 1 of Witsaman, below, initiates at a
`“Publicly Switched Telephone Network” (PSTN), where a phone call from
`the PSTN to a subscriber is received by paging terminal 22, 24. Id. at 8:20–
`24. From the phone call, paging terminal 22, 24 generates the message, or
`page, which is then broadcast from hub 28 to a number of stations 30 spread
`across a wide geographic area. Id. at 7:9–12.
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`Figure 1 of Witsaman, above, illustrates a paging system for
`broadcasting a message to a pager 29. Having received the message from
`hub 28, station 30 broadcasts, simultaneously with other stations 30, the
`same message signal for reception by a pager. Id. at 7:9–39. Witsaman
`states that it is important to send signals simultaneously in such a paging
`system so that “in overlap areas the signals from multiple transmitter sites
`will be in phase and combine to produce a single signal that can readily be
`processed by the intended receiver.” Id. at 1:47–50.
`Witsaman’s Figure 2, below, next illustrates the paging system having
`various local area groups 38 (“LAG”) making up wide area group 37
`(“WAG”).
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`Figure 2 of Witsaman, above, depicts a plurality of individual
`transmitting stations 30 geographically spaced apart within the LAG’s that
`constitute the larger WAG. Id. at 7:47–53. Witsaman explains that each
`station 30 includes at least one transmitter 34 “capable of broadcasting
`signals in any format in which they can be processed by the complementary
`pagers 29.” Id. at 7:54–62.
`2. Overview of Bingham
`Bingham, titled “Multicarrier Modulation for Data Transmission: An
`Idea Whose Time Has Come,” teaches using multi-carrier modulation, such
`as the “Quadrature Amplitude Modulation” (QAM) on (i) “General
`Switched Telephone Network” (GSTN), (ii) 60–80 kHz Frequency Division
`Mulitplexedmultiplexed (FDM) group-band, and (iii) Cellular radio. Ex.
`1015, 1. Bingham’s Figure 1, reproduced below, illustrates a basic
`multicarrier transmitter.
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`Figure 1 of Bingham, above, depicts a series of modulators fc,1, 2 . . . n,
`for respectively modulating m1, 2 . . . n bit streams and combining the carrier
`signals for output. Id. at 1. Bingham discloses general techniques and
`algorithms for parallel transmission, i.e., multicarrier modulation, of
`information on different carrier signals and potential implementation of
`these techniques and algorithms on a General Switched Telephone Network
`(“GSTN”). Id. at 7–8.
`3. Discussion
`The Asserted Combination of Witsaman and Bingham
`Petitioner contends that Witsaman discloses a simulcast signal
`transmission system including first and second transmitters, i.e., stations 30
`that each include transmitter 34, as recited in each of the independent claims.
`Pet. 13–14. Petitioner points to Witsaman’s Specification as describing the
`simulcast limitation where stations 30 “all broadcast the same paging signal
`at the same time.” Id. at 13 (quoting Ex. 1012, 7:33–35). See generally Ex.
`1012, Fig. 2. Relying on its expert, Dr. Kakaes, Petitioner further argues
`that Witsaman is not limited to any particular transmission format or
`modulation scheme, and therefore when considering Witsaman “it would
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`have been obvious to one of ordinary skill in the art at the time of the ’210
`patent to employ a known multicarrier modulation (MCM) method of
`transmission, such as the one described by Bingham.” Pet. 15 (citing Ex.
`1015, 5); Ex. 1003 ¶ 23.
`Patent Owner argues inter alia, that Petitioner has failed to present an
`articulated reason with evidentiary underpinnings to properly support its
`assertions of obviousness. Prelim. Resp. 15. Patent Owner contends that
`although Bingham teaches multicarrier modulation, Petitioner has not
`explained sufficiently how simulcast multicarrier modulation schemes would
`be implemented in Witsaman’s system because Witsaman discloses
`simulcasting only a specific single carrier signal transmission. Id. at 16.
`Patent Owner asserts that on Witsaman’s transmission side of the system,
`i.e., at the simulcasting stations 30, broadcasting a multicarrier modulation
`scheme is not a straightforward matter because “the precise synchronization
`required by Witsaman would be exponentially more difficult to achieve
`when every single subcarriers has to be precisely synchronized with the
`corresponding other subcarriers. Each additional subcarrier would have to
`be synchronized by each transmitter.” Id.
`We agree with Patent Owner that Petitioner has not provided a
`sufficient reasoning supported by persuasive evidence to support the
`combination of these references. Petitioner makes several unpersuasive
`arguments to support the combination of Witsaman and Bingham. Initially,
`Petitioner argues that Bingham itself provides the motivation for the
`combination because Bingham describes potential benefits of using
`multicarrier modulation in a GSTN. Pet. 15. We are not persuaded by this
`argument because it is Witsaman’s transmission stations 30 that provide the
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`requisite simulcasting of signals separate and apart from PSTN 26.5 See Ex.
`1012, Fig. 1. PSTN 26 provides for a telephone call or information as an
`input to a paging terminal, which then determines a page that is sent to hub
`28 for initial broadcast. Id. at 7:5–21. We do not understand the PSTN
`application in Witsaman to involve simulcast signal transmission or even
`multicarrier modulation as recited in the claims at issue. To the extent
`multicarrier modulation (“MCM”) is capable of being implemented in the
`GSTN described in Bingham, implementation into Witsaman’s PSTN does
`not explain how or why Witsaman’s stations 30 and transmitters 34
`operating on the wireless transmission side of that system, apart from the
`PSTN, would use such a MCM scheme.
`Next, Petitioner asserts that one of ordinary skill in the art would have
`understood that Bingham’s MCM scheme and transmitters use multiple
`carrier signals, each carrying “a portion of the information signal
`substantially not represented by others of the carrier signals,” and could
`replace Witsaman’s transmitters. Pet. 17–18; Ex. 1003 ¶¶ 25, 27. In other
`words, Petitioner argues that a known MCM scheme such as QAM
`described in Bingham could be readily implemented into Witsaman’s
`simulcasting system by essentially replacing Witsaman’s transmitters 34
`with MCM modems. Id. Using MCM modems in Witsaman’s stations 30
`would then, purportedly, simulcast the modulated signals across the network
`or at least a LAN. Id. In support of Petitioner’s position Dr. Kakaes alleges
`that “one of ordinary skill in the art would have replaced the transmitters 34
`
`
`5 We understand no substantive technical difference between a General
`Switched Telephone Network (GSTN) and a Public Switched Telephone
`Network (PSTN).
`
`18
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`IPR2015-01725
`Patent 5,915,210
`
`and pagers 29 with the MCM modems described by Bingham” so that the
`stations “would ‘all broadcast the same paging signal at the same time.’”
`Ex. 1003 ¶ 26 (quoting Ex. 101[2] , 7:33–35). Petitioner and its declarant,
`however, generally allege the substitution of a multicarrier modem in place
`of a single carrier modem, and then a desired result, i.e., that the multiple
`carrier signals would be correspondingly simulcast across a network. Pet.
`17. This explanation is not supported by the evidence that Petitioner points
`to in Bingham, and does not describe sufficiently how the alleged modems
`would have been known substitutions that would yield the purportedly
`predictable result of simulcasting multiple carrier signals. See 37 C.F.R. §
`42.104(b)(4) (“[T]he petition must set forth . . . [h]ow the construed claim is
`unpatentable under the statutory grounds identified in paragraph (b)(2) of
`this section.”). Although MCM arguably may have been a known technique
`for signal transmission, this knowledge does not sufficiently link it as a
`substitute known in the field for simultaneous signal transmission between
`separate transmitters. See KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 418
`(2007) (“a patent composed of several elements is not proved obvious
`merely by demonstrating that each of its elements was, independently,
`known in the prior art”)
`Dr. Kakaes alleges that a prior art reference by Le Floch further
`supports the proposition that one of ordinary skill in the art would have
`knowledge and ability to combine an MCM system such as Coded
`Orthogonal Frequency Division Multiplex (COFDM) with a simultaneous
`signal transmission system.6 Ex. 1003 ¶ 25. Dr. Kakaes states that, “Le
`
`
`6 Ex. 1016, Bernard Le Floch et al., Digital Sound Broadcasting to Mobile
`Receivers, 35 IEEE TRANSACTIONS ON CONSUMER ELECTRONICS 493 (1989).
`19
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`IPR2015-01725
`Patent 5,915,210
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`Floch describes a broadcasting service in which a plurality of transmitters
`‘would be temporally synchronized and would all transmit the same signal.’”
`Id. (quoting Ex. 1016, 9 §7). Neither this reference, nor Dr. Kakaes’s
`testimony restating the words of the Le Floch reference, is persuasive
`because Le Floch merely describes the desired result of synchronized, i.e.,
`simultaneous, transmission of an MCM signal. Le Floch also fails to
`describe sufficiently how such synchronization would occur, and neither
`does Petitioner point us to sufficient evidence in the reference that
`purportedly provides such an explanation. Although Dr. Kakaes states with
`respect to Le Floch that “the transmission of MCM signals in simulcast from
`multiple, geographically dispersed transmitters had already been
`accomplished in other contexts well before the filing of the ’210 patent”
`(id.), this statement is not consistent with Le Floch. Indeed, Le Floch
`indicates that use of COFDM system with a geographically dispersed
`synchronized transmitter network is “research” and a subject that the authors
`are “looking into.” Ex. 1016, 9 §7. Therefore, we are not persuaded that Dr.
`Kakaes’s testimony on this point is entitled to any weight.
`We are not persuaded that the above described allegations are
`supported by persuasive evidence or adequate explanation that the
`substitution of Bingham’s MCM scheme into Witsaman’s PSTN could yield
`the predictable result of simultaneous transmission across the network. The
`arguments and evidence presented by Petitioner, in light of the information
`presented in the Preliminary Response, is insufficient to show the
`predictability or obviousness of combining such MCM transmission with
`simultaneous transmission of the same information as in Witsaman. See
`KSR Int’l Co. v. Teleflex Inc., 550 US 398, 418 (2007) (“[R]ejections on
`
`20
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`IPR2015-01725
`Patent 5,915,210
`
`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.”) Although
`multicarrier modulation may have been known, Petitioner has failed to
`provide the requisite showing of an articulated reason with sufficient
`evidentiary underpinnings for the alleged combination of Witsaman and
`Bingham.
`
`IV. SUMMARY
`For the foregoing reasons, we do not institute inter partes review of
`
`the ’210 patent on the alleged ground of unpatentability.
`V. ORDER
` After due consideration of the record before us, it is:
`
`ORDERED that the Petition is denied and no trial is instituted.
`
`21
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`IPR2015-01725
`Patent 5,915,210
`
`For PETITIONER:
`
`Heath J. Briggs
`GREENBERG TRAURIG, LLP
`BriggsH@gtlaw.com
`
`Patrick J. McCarthy
`GREENBERG TRAURIG, LLP
`McCarthyP@gtlaw.com
`
`
`
`For PATENT OWNER:
`
`John R. Kasha
`KASHA LAW LLC
`john.kasha@kashalaw.com
`
`Craig Steven Jepson
`REED & SCARDINO LLP
`cjepson@reedscardino.com
`
`Kirk D. Dorius
`REED & SCARDINO LLP
`kdorius@reedscardino.com
`
`
`22
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