throbber
Paper 9
`Entered: January 22, 2015
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-01036
`Patent 5,915,210
`____________
`
`
`Before MIRIAM L. QUINN, MEREDITH C. PETRAVICK, and
`SCOTT A. DANIELS, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`
`
`DECISION
`Decision on Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`1
`
`Petitioner Samsung - SAM1011
`
`

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`IPR2014-01036
`Patent 5,915,210
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`
`A. Background
`
`I. INTRODUCTION
`
`Apple Inc. (“Petitioner”) filed a Petition to institute an inter partes
`
`review of claims 1, 10, and 19 of U.S. Patent No. 5,915,210 (“the ’210
`
`patent”). Paper 6 (“Pet.”). Mobile Telecommunications Technologies, LLC
`
`(“Patent Owner”) timely filed Patent Owner’s waiver of its Preliminary
`
`Response. Paper 8.
`
`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 Petition and the Preliminary Response, we determine that Petitioner
`
`has established a reasonable likelihood of prevailing on the claims
`
`challenged in the Petition. Accordingly, we institute an inter partes review
`
`of claims 1, 10, and 19 of the ’210 patent.
`
`B. Additional Proceedings
`
`Petitioner states that the ’210 patent presently is asserted against
`
`Petitioner in Mobile Telecommunications Technologies, LLC v. Apple Inc.,
`
`Case No. 2:13-CV-258 in the U. S. District Court for the Eastern District of
`
`Texas (hereinafter “the Apple lawsuit”). Pet. 1. Petitioner also notes that
`
`the ’210 patent is asserted against other parties in Mobile
`
`Telecommunications Technologies, LLC v. Sprint Nextel Corp., Case No.
`
`2:12-CV-832 (E.D. Tex.); Mobile Telecommunications Technologies, LLC v.
`
`Leap Wireless International, Inc., Case No. 2-13-CV-885 (E.D. Tex.);
`
`Mobile Telecommunications Technologies, LLC v. T-Mobile USA, Inc., Case
`
`No. 2-13-CV-886 (E.D. Tex.); and Mobile Telecommunications
`
`Technologies, LLC v. Samsung Telecommunications America, LLC, Case
`
`No. 2:13-CV-259, all in the Eastern District of Texas. Id.
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`IPR2014-01036
`Patent 5,915,210
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`
`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.
`
`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 and mobile unit 624. Id. at 8:46–48.
`
`Figure 6 is a schematic diagram of a communication system.
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`IPR2014-01036
`Patent 5,915,210
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`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
`
`portable communication device, for instance, a pager, and can both receive
`
`and transmit a signal. Id. at 9:6–11.
`
`The written description explains that dash line 660 is only an
`
`approximate boundary because each zone actually has its own boundary, and
`
`the boundaries of adjacent zones overlap with one another. Id. at 9:46–56.
`
`Such an “overlap area” between zones as known in the prior art, is best
`
`shown by boundaries 202 and 204 in Figure 2 of the ’210 patent. Id. at
`
`9:57–65. Figure 2 is reproduced below:
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`IPR2014-01036
`Patent 5,915,210
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`Figure 2 is a schematic diagram of
`uniform smooth earth propagation.
`
`As depicted by Figure 2 of the ’210 patent, curved boundaries 202 and 204
`
`define an overlap area and equi-signal boundary 200. Id. at 9:59–61.
`
`
`
`Keeping Figure 6 of the ’210 patent in mind, 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
`
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`IPR2014-01036
`Patent 5,915,210
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`612 can transmit different data for a different mobile unit within zone 2 to
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`“increase information throughput and system efficiency.” Id. at 10:45–59.
`
`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
`the first plurality of carrier signals.
`
`
`
`E. The Alleged Grounds of Unpatentability
`
`Petitioner contends that the challenged claims are unpatentable on the
`
`following specific grounds.1
`
`
`
`References
`
`Saalfrank2
`
`Basis
`
`§ 102
`
`Claims Challenged
`
`1 and 10
`
`
`1 Petitioner supports its challenge with a Declaration of Dr. Apostolos K.
`Kakaes, Ph.D. (Ex. 1004,“Kakaes Decl.”). See infra.
`2 Ex. 1008, DE 41 02 408 A1 (filed Jan. 28, 1991).
`6
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`IPR2014-01036
`Patent 5,915,210
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`References
`
`Saalfrank and
`
`Nakamura3
`
`Basis
`
`§ 103
`
`Claims Challenged
`
`19
`
`Witsaman4 and
`
`§ 103
`
`1, 10, and 19
`
`Bingham5
`
`
`
`II. CLAIM CONSTRUCTION
`
`A. Legal Standard
`
`Consistent with the statute and the legislative history of the Leahy-
`
`Smith America Invents Act (“AIA”), the Board interprets claims of an
`
`unexpired patent using the broadest reasonable construction in light of the
`
`specification of the patent. 37 CFR § 42.100(b). Under the broadest
`
`reasonable construction standard, claims are to be given their broadest
`
`reasonable interpretation consistent with the specification, and the claim
`
`language should be read in light of the specification as it would be
`
`interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech.
`
`Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
`
`The Office interprets limitations arising under 35 U.S.C. § 112,
`
`paragraph six, in light of the corresponding structure, material or acts
`
`described in the specification. In re Donaldson Co., Inc., 16 F.3d 1189,
`
`1193 (Fed. Cir. 1994) (“[P]aragraph six applies regardless of the context in
`
`
`3 Ex. 1009, Yasuhisa Nakamura, Yoichi Saito, and Satoru Aikawa, 256
`QAM Modem for Multicarrier 400 Mbit/s Digital Radio, IEEE Journal On
`Selected Areas in Communications, Vol. SAC-5, NO. 3 April 1987, at 329.
`4 Ex. 1010, U.S. Patent No. 5,365,569 (Nov. 15, 1994).
`5 Ex. 1011, John A.C. Bingham, Multicarrier Modulation for Data
`Transmission: An Idea Whose Time has Come, IEEE Communication
`Magazine, May 1990, at 5.
`
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`IPR2014-01036
`Patent 5,915,210
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`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.”). Construing claims in
`
`accordance with 35 U.S.C. § 112, paragraph six does not conflict with our
`
`standard of reviewing claims under the broadest reasonable interpretation,
`
`because § 112, paragraph six “merely sets a limit on how broadly the PTO
`
`may construe means-plus-function language.” Id. at 1194.
`
`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 cannot suffice as multiple transmitters.” Pet. 5. 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,
`
`under the broadest reasonable interpretation, we interpret “transmitter”
`
`(singular) as being 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 broadest
`
`reasonable interpretation, the function for the “means for transmitting” is
`
`“transmitting 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.” Pet. 7. 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, each of
`
`the second plurality of carrier signals corresponding to and representing
`
`substantially the same information as a respective carrier signal of the first
`
`plurality of carrier signals.” Pet. 9.
`
`For both limitations, 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 alternatively “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.”
`
`Pet. 7–8, 10.
`
`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.
`
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`IPR2014-01036
`Patent 5,915,210
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`§ 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 . . . plurality of carrier signals” is base transmitter 1300, and
`
`alternatively, base transmitter 1400 as shown in Figures 13 and 14. We find
`
`Petitioner’s proposed construction to be reasonable. For purposes of this
`
`Decision, the corresponding structure for “means for transmitting a . . .
`
`plurality of carrier signals” is: a base transmitter corresponding to the
`
`embodiments as shown and described in Figures 13 and 14 of the
`
`’210 patent and equivalents. Ex. 1001, 15:47–16:30, Figs. 13 and 14.
`
`3. Transmitting in simulcast
`
`Independent claims 1, 10, and 19 recite “transmit . . . in simulcast,” or,
`
`“transmitting . . . in simulcast.” According to Petitioner, the term means:
`
`“transmitting the same information at the same time.” Pet. 11.
`
`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 (emphasis added). Although the
`
`Specification does not specifically say the information is transmitted “at the
`
`same time,” the plain meaning of the word “simultaneously” as used
`
`throughout the written description and drawings is, “at the same time.” See
`
`Id. at 1:46–65, 6:1–21, Figures 7, 26.
`
`Accordingly, for purposes of this Decision, the broadest reasonable
`
`interpretation in the context of the Specification of “transmit[] . . . in
`
`simulcast,” is “transmitting the same information at the same time.”
`
`10
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`Patent 5,915,210
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`III. ANALYSIS
`
`We turn now to Petitioner’s asserted grounds of unpatentability to
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`determine whether Petitioner has met the threshold standard of 35 U.S.C.
`
`§ 314(a).
`
`A. Claims 1 and 10 – Anticipation by Saalfrank
`
`Petitioner asserts that claims 1 and 10 would have been anticipated by
`
`Saalfrank. Pet. 14–27. Petitioner has established a reasonable likelihood of
`
`prevailing on its assertion that claims 1 and 10 are anticipated for the reasons
`
`explained below.
`
`1. Overview of Saalfrank
`
`Saalfrank discloses particular aspects of “common-wave radio
`
`operation of a transmitter,” including digital audio broadcasting (“DAB”) a
`
`digital radio broadcasting technology by which transmitter stations in a
`
`particular geographic region “simultaneously emit transmission signals with
`
`the same modulation content on the very same transmission frequency
`
`and/or the same carrier frequencies.” Ex. 1008, col. 1 ¶ 4. Saalfrank
`
`explains that broad area coverage is accomplished by providing at least 4
`
`different transmission channels in a particular bandwidth B, where the
`
`frequency bandwidth totals 4 x B. Id. at col. 1 ¶ 7– col. 2 ¶ 1.
`
`Saalfrank also describes a transmission procedure referred to as
`
`Coded Orthogonal Frequency Division Multiplex (“COFDM”) using a
`
`carrier frequency across a bandwidth of 1.5 MHz, and “[w]ithin the channel
`
`bandwidth available here a plurality of individual carriers (e.g., 448 carrier
`
`frequencies equidistantly spaced over the frequency axis) is impinged with a
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`4-DPSK-modulation.” Id. at col. 1 ¶ 5. Referring to Figure 1a, Saalfrank
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`11
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`IPR2014-01036
`Patent 5,915,210
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`explains that within a region of a larger area network, “carrier frequencies
`
`are transmitted simultaneously with equidistant frequency distances Δf in a
`
`frequency range with the bandwidth B. The individual carriers are each
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`modulated with one part of the digital data, with the modulation content of
`
`the individual carriers being identical for all transmitter stations of the
`
`transmission region.” Id. at col. 2 ¶ 8.
`
`Although Saalfrank’s disclosure relates specifically to a radio
`
`network, the written description further explains that the transmitted data
`
`content is not limited to radio signals, and could include partial or complete
`
`information, or control data, as well as image data. Id.
`
`2. Discussion
`
`Petitioner argues that 4-DPSK-modulation described in Saalfrank is a
`
`type of multicarrier modulation where, as called for in claims 1, 10, and 19,
`
`“each of the transmitted plurality of carrier signals represents a portion of
`
`the information signal substantially not represented by others of the plurality
`
`of carrier signals (i.e., ‘individual carriers are each modulated with one part
`
`of the digital data’).” Pet. 17 (citing Ex. 1008, col. 2 ¶ 9). Petitioner
`
`supports this argument with Dr. Kakaes Declaration, who states that “[i]n
`
`other words, the digital data that represents the multiple stereo radio
`
`programs is split into multiple ‘parts’ and each different ‘part’ is used to
`
`modulate one of the multiple carrier signals.” Kakaes Decl., ¶ 25.
`
`Petitioner points to an annotated version of Saalfrank’s Figure 1a,
`
`reproduced below, contending that Figure 1a illustrates the signals
`
`transmitted by each of Saalfrank’s transmitters.
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`IPR2014-01036
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`
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`Figure 1a of Saalfrank indicates the carrier frequencies 1, 2, 3 . . . n
`
`within the frequency band B, each of which carry a portion of the radio
`
`program. Based on Saalfrank’s explanation that the modulation content of
`
`the individual carriers is identical for all transmitter stations in a region,
`
`Petitioner concludes that “[o]ne of ordinary skill in the art would have
`
`[under]stood this to mean that each of the plurality of transmitters (i.e., at
`
`least a first and a second transmitter) in a region of Saalfrank’s system
`
`transmits the same set of carrier signals illustrated in the previous annotation
`
`of FIG. 1a.” Pet. 18. Relying on expert testimony, Petitioner also points out
`
`that one of ordinary skill in the art would understand from the written
`
`description, and context of Saalfrank that the transmitter stations in a given
`
`region are “necessarily spatially separated” to provide appropriate
`
`broadcasting coverage throughout the region. Pet. 21 (citing Kakaes Decl. ¶
`
`26).
`
`We are persuaded by the evidence of record that Saalfrank discloses
`
`each of the structural limitations of claim 1, as well as the method steps of
`
`“generating . . . carrier signals,” and “transmitting . . . carrier signals,” as
`
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`called for in claim 10. For the reasons provided above, Petitioner has
`
`established a reasonable likelihood of prevailing on the ground of
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`unpatentability of claims 1 and 10 as anticipated by Saalfrank under
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`35 U.S.C. § 102(b).
`
`B. Claim 19 – Obviousness over Saalfrank and Nakamura
`
`Petitioner has established a reasonable likelihood of prevailing on
`
`their assertion that claims 19 is obvious for the reasons explained below.
`
`1. Overview of Nakamura
`
`Nakamura discloses a 256 QAM (“Quadrature Amplitude
`
`Modulation”) multicarrier modulator for encoding four carrier signals f1–f4
`
`which are provided to a hybrid circuit for combination into a single signal
`
`and then sent to a transmitter for broadcasting. Figure 1 of Nakamura is
`
`reproduced below:
`
`
`
`Figure 1 illustrates a block diagram of the 256 QAM modulator.
`
`As shown by Nakamura’s Figure 1, above, the multicarrier modulator
`
`schematic includes essentially 4 modulators, with each modulator
`
`differentially encoding eight binary streams of 12.5 MBaud binary signals.
`
`Ex. 1009, 329. For each modulator a Digital/Analog convertor provides
`
`quadrature 16 level signals to an oscillator and the 256 QAM signals are
`
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`combined in the hybrid circuit H as a single signal, IF out, for broadcast by
`
`an antenna. Id.
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`2. Discussion
`
`As noted by Petitioner, the main difference between claim 1 and claim
`
`19 is essentially the use of mean-plus-function limitations “means for
`
`transmitting” in claim 19, instead of a first and second transmitter. Pet. 27–
`
`28. We determined, for purposes of this Decision, that the corresponding
`
`structure in the Specification for these means-plus-function limitations are
`
`the embodiments of the invention disclosed by Figures 13 and 14, the
`
`relative portion of the written description and equivalents. See Section
`
`II.A.2, supra. Petitioner points out that Saalfrank does not explicitly
`
`disclose a system or component diagram that illustrates transmitters as in the
`
`embodiments shown in Figures 13 and 14 of the ’210 patent. Pet. 28.
`
`Petitioner argues that common-wave transmitters, as shown in Figures 13
`
`and 14, “were well known in the art” at the time of the ’210 patent, and turns
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`to Nakamura for this a specific transmitter structure and schematic. Id.
`
`Petitioner argues that the transmitter described in Nakamura is the
`
`same as the embodiment shown in Figure 14 of the ’210 patent. Petitioner
`
`provides a side-by-side comparison of Figure 14, and Nakamura’s drawing,
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`purportedly illustrating essentially the same schematic diagram for a multi-
`
`carrier modem, including binary data stream inputs to an array of modulators
`
`for encoding and amplifiers which output the respective signals to a
`
`combiner for emission from an antenna. Pet 31. Petitioner asserts that
`
`although neither control logic nor an antenna is explicitly disclosed in
`
`Nakamura, “one of ordinary skill in the art would have readily appreciated
`
`the existence of each contextually and from reading Nakamura’s written
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`description.” Id. at 32. Petitioner’s expert, Dr. Kakaes, alleges that one of
`
`ordinary skill would understand that “Nakarmua [sic] describes the use of
`
`various control signals, which would necessarily be issued by some form of
`
`control logic.” Ex. 1004 ¶ 41 (citing Ex. 1009, p. 331, § III(B)(1)
`
`(describing a “VCO control signal” and a “VCXO control signal”)). Dr.
`
`Kakaes also testifies that a person of ordinary skill in the art would
`
`understand that an IF “Intermediate Frequency” out signal as disclosed by
`
`Nakamura’s figure “would be up-converted to a Radio Frequency (RF)
`
`signal which necessarily relies upon an antenna for transmission.” Id.
`
`Petitioner contends that the combination of these references is
`
`appropriate because, where Saalfrank fails to disclose a particular type of
`
`multicarrier transmitter or specific transmitter structure for implementing the
`
`common-wave transmission system, one of ordinary skill in the art would
`
`look to Nakamura for a transmitter structure to implement the functionality
`
`of the common-wave transmission system described in Saalfrank. Pet. 28–
`
`29. Relying again on Dr. Kakaes’s Declaration, Petitioner supports this
`
`reasoning by explaining that although “the transmitter described by
`
`Nakamura relies upon a more complex form [of] modulation (i.e., 256-QAM
`
`vs. 4-DPSK), Nakamura’s transmitter would be capable of transmitting at
`
`least the amount of data to that described as being transmitted by Saalfrank’s
`
`transmitters.” Pet. 30 (citing Ex. 1004 ¶ 39).
`
`We are persuaded for purposes of this Decision, by the reasons set
`
`forth by Petitioner, that Saalfrank and Nakamura disclose the claim
`
`limitations in claim 19, and that one of ordinary skill in the art would have
`
`been motivated to combine these references.
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`C. Additional Ground
`
`Turning to ground 3, Petitioner requests that we consider obviousness
`
`of claims 1, 10, and 19 in view of Witsaman and Bingham. Pet. 34–59.
`
`Petitioner argues specifically that the grounds not be considered redundant
`
`by the Board as “Petitioner has already limited its petitions to a reasonable
`
`number of grounds, Petitioner respectfully requests that the Board institute
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`rejections on all grounds presented in this petition to avoid prejudicing
`
`Petitioner.” Pet. 59. For this additional ground, we exercise our discretion,
`
`and do not institute review regarding this alleged ground of unpatentability
`
`that claims 1, 10, and 19 would have been obvious over Witsaman and
`
`Bingham. See 37 C.F.R. § 42.108(a).
`
`IV. SUMMARY
`
`
`
`For the forgoing reasons, we determine that the information presented
`
`in the Petition establishes a reasonable likelihood that Petitioner would
`
`prevail on at least one alleged ground of unpatentability with respect to each
`
`of claims 1, 10, and 19 of the ’210 patent.
`
`
`
`The Board has not made a final determination on the patentability of
`
`any challenged claims.
`
` For the reasons given, it is
`
`V. ORDER
`
`ORDERED that inter partes review of the ’210 patent is hereby
`
`instituted as to all the challenged claims on the following grounds:
`
`1. Claims 1 and 10 as anticipated by Saalfrank;
`
`2. Claim 19 as obvious over Saalfrank and Nakamura;
`
`FURTHER ORDERED that no ground other than those specifically
`
`granted above is authorized for the inter partes review; and
`
`17
`
`
`
`

`
`IPR2014-01036
`Patent 5,915,210
`
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial on the
`
`grounds of unpatentability authorized above; the trial commences on the
`
`entry date of this decision.
`
`18
`
`
`
`

`
`
`
`19
`
`IPR2014-01036
`Patent 5,915,210
`
`For PETITIONER:
`
`W. Karl Renner
`Thomas A. Rozylowicz,
`FISH & RICHARDSON P.C.
`axf@fr.com
`IPR39521-00051P1@fr.com
`
`
`
`For PATENT OWNER:
`
`John R. Kasha
`Kasha Law LLC
`john.kasha@kashalaw.com
`
`Craig S. Jepson
`Reed & Scardino LLP
`cjepson@reedscardino.com
`
`Kirk D. Dorius
`Reed & Scardino LLP
`kdorius@reedscardino.com

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