Paper No. _
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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.
`
`Patent No. 5,915,210
`
`Issued: June 22, 1999
`
`Filed: July 24, 1997
`Inventors: Dennis Wayne Cameron, Walter Charles Roehr, Jr., Jai P. Bhagat,
`Masood Garahi, William D. Hays, David W. Ackerman
`Title: METHOD AND SYSTEM FOR PROVIDING MULTICARRIER
`SIMULCAST TRANSMISSION
`
`Inter Partes Review No. IPR2015 -01725
`
`PETITION FOR INTER PAR TES REVIEW
`
`NY245347839v2
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`
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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.
`
`Patent No. 5,915,210
`
`Issued: June 22, 1999
`
`Filed: July 24, 1997
`Inventors: Dennis Wayne Cameron, Walter Charles Roehr, Jr., Jai P. Bhagat,
`Masood Garahi, William D. Hays, David W. Ackerman
`Title: METHOD AND SYSTEM FOR PROVIDING MULTICARRIER
`SIMULCAST TRANSMISSION
`
`Inter Partes Review No. IPR2015 -01725
`
`PETITION FOR INTER PAR TES REVIEW
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`NY245347839v2
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`
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`TABLE OF CONTENTS
`
`MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) ................. ..1
`
`A.
`
`B.
`
`C.
`
`Real Party-In-Interest Under 37 C.F.R. § 42.8(B)(1) .................... ..1
`
`Related Matters Under 37 C.F.R. § 42.8(B)(2) ............................. ..1
`
`Counsel Under 37 C.F.R. § 42.8(B)(3) and Service Information ....2
`
`PAYMENT OF FEES — 37 C.F.R. § 42.103 .......................................... ..2
`
`III.
`
`REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104 .................... ..3
`
`A.
`
`B.
`
`C.
`
`Grounds for Standing under 37 C.F.R. § 42.104(A) ..................... ..3
`
`Challenge under 37 C.F.R. § 42.104(B) and Relief Requested ..... ..3
`
`Claim Construction under 37 C.F.R. §§ 42.104(B)(3) .................. ..4
`
`1.
`
`2.
`
`3.
`
`A .
`
`.
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`. transmitter (Claims 1 and 10) ................................... ..5
`
`Means for transmitting a [] plurality of carrier signals (Claim
`19) ..................................................................................... ..7
`
`In simulcast (Claims 1, 10, 19) ........................................ .. 10
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`IV.
`
`SUMMARY OF THE ’210 PATENT .................................................. ..11
`
`A.
`
`Brief Description ........................................................................ .. 11
`
`MANNER OF APPLYING CITED PRIOR ART TO EACH CLAIM
`FOR WHICH AN IPR IS REQUESTED, THUS ESTABLISHING A
`REASONABLE LIKELIHOOD THAT AT LEAST ONE CLAIM OF
`
`THE ’210 PATENT IS UNPATENTABLE. ........................................ .. 12
`
`A.
`
`[GROUND 1] — Witsaman in View of Bingham Render Claims 1,
`7-8, 10, 15-17, and 19 Obvious .................................................. .. 13
`
`1.
`
`2.
`
`3.
`
`4.
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`Claim 1 ............................................................................ ..20
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`Claim 7 ............................................................................ ..24
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`Claim 8 ............................................................................ ..27
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`Claim 10 .......................................................................... ..28
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`5.
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`6.
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`7.
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`8.
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`Claim 15 .......................................................................... ..34
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`Claim 16 .......................................................................... ..36
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`Claim 17 .......................................................................... ..37
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`Claim 19 .......................................................................... ..38
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`VI. REDUNDANCY ................................................................................. ..42
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`VII. CONCLUSION ................................................................................... ..42
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`EXHIBITS
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`SAM1001 — U.S. Patent 5,915,210 to Cameron et al., filed Jul. 24, 1997
`
`SAM1002 — Mobile Telecommunications Technologies, LLC V. Samsung
`Electronics Co., Ltd., et al., Case No. 2:15-cv-00183, Plaintiff Mobile
`Telecommunications Technologies, LLC’s Original Complaint (Feb. 9, 2015)
`
`SAM1003 — Declaration of Dr. Apostolos (Paul) Kakaes
`
`SAM1004 — Mobile Telecommunications Technologies, LLC V. Clearwire
`Corp., et al., Case No. 2:12-cv-00308-JRG-RSP, Claim Construction
`Memorandum and Order (July 1, 2013)
`
`SAM1005 — Mobile Telecommunications Technologies, LLC V. Sprint Nextel
`Corp., et a1., Case No. 2:12-cv-00832-JRG-RSP, Claim Construction
`Memorandum and Order (May 2, 2014)
`
`SAM1006 — Mobile Telecommunications Technologies, LLC V. T-Mobile USA,
`Inc., et al., Case No. 2:13-cv-00886-JRG-RSP, Claim Construction
`Memorandum and Order (Jan. 23, 2015)
`
`SAM1007 — Mobile Telecommunications Technologies, LLC V. Leap Wireless
`International, Inc., et al., Case No. 2:13-cv-00885-JRG-RSP, Claim
`Construction Memorandum and Order (May 12, 2015)
`
`SAM1008 — The American Heritage Dictionary of the English Language, 1902,
`(3rd ed. 1992)
`
`SAM1009 — Standards Coordinating Committee 10, Terms and Definitions, The
`IEEE Standard Dictionary of Electrical and Electronics Terms, 1140, (6th ed.
`1996)
`
`SAM101O — McGraw-Hill Dictionary of Scientific and Technical Terms, 1644,
`(5th ed. 1993)
`
`SAM1011 — Apple Inc. v. Mobile Telecommunications Technologies, LLC,
`Case IPR2014-01036, Decision on Institution of Inter Partes Review (Jan. 22,
`2015)
`
`SAM1012 — U.S. Patent 5,365,569 to Witsaman et al., filed Aug. 17, 1992
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`SAM1013 — U.S. Patent 4,968,966 to Jasinski et al., filed Oct. 23, 1989
`
`SAM1014 — Prosecution History of U.S. Patent 5,915,210 to Cameron et al.,
`filed Jul. 24, 1997
`
`SAM1015 — John A. C. Bingham, Multicarrier Modulation for Data
`Transmission: An Idea Whose Time Has Come, 28 IEEE Communications
`
`Magazine 5 (May 1990)
`
`SAM1016 — Bernard Le Floch et al., Digital Sound Broadcasting to Mobile
`Receivers, 35 IEEE Transactions on Consumer Electronics 493 (Aug. 1989)
`
`SAM1017 — U.S. Patent No. 5,381,449 to Jasper, et al., filed Nov. 1, 1991
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`Samsung Electronics Co., Ltd. (“Petitioner” or “Samsung”) petitions for
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`Inter Partes Review (“IPR”) under 35 U.S.C. §§ 311—319 and 37 C.F.R. § 42 of
`
`claims 1, 7-8, 10 ,15-17, and 19 (the “Challenged Claims”) of U.S. Patent No.
`
`5,915,210 (the “’210 patent”) (Ex. SAM1001), of assignee Mobile
`
`Telecommunications Technologies, LLC (“Patentee” or “MTel”). As explained
`
`in this Petition, there exists a reasonable likelihood that Samsung will prevail
`
`with respect to at least one of the Challenged Claims.
`
`I.
`
`MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1)
`
`A.
`
`Real Party-In-Interest Under 37 C.F.R. § 42.8(B)(1)
`
`The real party of interest of this petition is: Samsung Electronics Co., Ltd.,
`
`a Korean corporation that has its principal place of business at 416 Maetan—
`
`3dong, Yeongton-gu, Suwon-City, Gyeonggi-do 443-742, South Korea.
`
`B.
`
`Related Matters Under 37 C.F.R. § 42.8(B)(2)
`
`Samsung is not aware of any terminal disclaimers for the ’210 patent.
`
`The ’210 Patent has been involved in at least five litigations; one naming
`
`Samsung as a defendant: Mobile Telecommunications Technologies, LLC v.
`
`Samsung Electronics Co., Ltd., et al., Case No. 2:15-cv-183 (E.D. Tex.)
`
`(hereinafter, the “Samsung Litigation”); Mobile Telecommunications
`
`Technologies, LLC v. T-Mobile USA, Inc., et al., Case No. 2:l3-cv-886-JRG-
`
`RSP (E.D. TeX.); Mobile Telecommunications Technologies, LLC v. Apple, Inc.,
`
`Case No. 2-13-cv-258 (E.D. Tex.); Mobile Telecommunications Technologies,
`
`LLC v. Leap Wireless International, Inc., Case No. 2-13-cv-885 (E.D. Tex.);
`1
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`and Mobile Telecommunications Technologies, LLC v. AT&T Mobility LLC, et
`
`al., Case No. 2:14-cv-897 (E.D. Tex.).
`
`Two prior IPR actions were instituted on the ’210 patent: Apple Inc. v.
`
`Mobile Telecommunications Technologies, LLC (IPR2014—O1036) (filed June
`
`27, 2014) (hereinafter, the “Apple IPR”); and T-Mobile USA Inc. v. Mobile
`
`Telecommunications Technologies, LLC (IPR2015-00015) (filed October 3,
`
`2014) (hereinafter, the “T-Mobile IPR”). Petitioner has reviewed the IPR
`
`petitions filed by Apple and T-Mobile, and, in the instant petition, challenges
`
`the ’210 Patent on grounds based on the same prior art references.
`
`C.
`
`Counsel Under 37 C.F.R. § 42.8(B)(3) and Service
`Information
`
`Samsung designates Heath J. Briggs (Reg. No. 54,919) as Lead Counsel
`
`and Patrick J. McCarthy (Reg. No. 62,762) as Backup Counsel. Mr. Briggs is
`
`available at Greenberg Traurig, LLP, 1200 17th Street, Suite 2400, Denver,
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`Colorado 80202 and Mr. McCarthy is available at Greenberg Traurig, LLP,
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`2101 L Street, N.W., Suite 1000, Washington, DC 20037. Please address all
`
`correspondence and service to counsel at the address provided in this section.
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`Samsung also consents to electronic service by email at
`
`MtelGTIPR@gtlaw.com.
`
`II.
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`PAYMENT OF FEES — 37 C.F.R. § 42.103
`
`Samsung authorizes the Patent and Trademark Office (the “Office”) to
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`charge Deposit Account No. 50-2775 for the fee set in 37 C.F.R. § 42.15(a) for
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`this Petition and further authorizes payment for any additional fees to be
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`charged to this Deposit Account.
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`III. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104
`
`A.
`
`Grounds for Standing under 37 C.F.R. § 42.104(A)
`
`Samsung certifies that the ’210 Patent is available for IPR. Samsung also
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`certifies that it is not barred or estopped from requesting an IPR challenging the
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`patent claims on the grounds identified in this petition. The present petition is
`
`being filed within one year of when Samsung was served with the Complaint in
`
`the co-pending Samsung Litigation. Service of process of the Complaint for
`
`Samsung was waived on February 27, 2015. See Ex. SAM1002.
`
`B.
`
`Challenge under 37 C.F.R. § 42.104(B) and Relief Requested
`
`Samsung requests IPR of the Challenged Claims of the ’2l0 Patent on the
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`grounds set forth in the table below, and requests that each of the claims be
`
`found unpatentable. An explanation of how these claims are unpatentable under
`
`the statutory grounds identified below, including an identification of where each
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`element is found in the prior art patents and/or printed publications and the
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`relevance of each prior art reference, is provided in the form of detailed
`
`description that follows. Additional explanation and support for each ground is
`
`set forth in Dr. Kakaes’ declaration, Ex. SAMIOO3 (“Kakaes Decl.”).
`
`
`
`
`Ground
`’210 Patent Claims
`Basis for Rejection
`
`Ground 1
`1, 7, 8, 10, 15-17, and
`§ 103 based on Witsaman in view of
`Bingham
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`Each of the above references qualifies as prior art under 35 U.S.C. § 102.
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`Specifically, Witsaman qualifies as prior art under 35 U.S.C. § l02(e), as it was
`
`filed on August 17, 1992, which is earlier than the earliest possible priority date
`
`to which the ’210 patent could be entitled: November 12, 1992.1 Bingham
`
`qualifies as prior art under 35 U.S.C. § 102(b), as it was published in May 1990,
`
`which is more than a year before than the earliest possible priority date to which
`
`the ’210 patent could be entitled. Samsung understands that these two
`
`references have been considered by the Patent Office with regard to the
`
`patentability of the ’210 patent in considering and instituting the Apple IPR and
`
`T-Mobile IPR.
`
`C.
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`Claim Construction under 37 C.F.R. §§ 42.104(B)(3)
`
`The ’2l0 patent expired on November 12, 2012. 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). The principle set forth by the
`
`court in Phillips v. AWH Corp, 415 F.3d 1303, 1312, 1327 (Fed. Cir. 2005) is
`
`1 The ’210 patent issued from an application filed on July 24, 1997. The ’210
`
`patent is a continuation of and claims priority to U.S. Application No.
`
`08/760,457, filed on December 6, 1996, which is a continuation of U.S.
`
`Application No. 07/973,918 (now U.S. Patent No. 5,590,403), filed on
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`November 12, 1992.
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`applied. Under Phillips, the words of a claim “are generally given their ordinary
`
`and customary meaning” as understood by a person of ordinary skill in the art in
`
`question at the time of the invention. Id.
`
`Petitioner acknowledges that the Board may have applied the broadest
`
`reasonable interpretation (“BRI”) standard in instituting the Apple IPR and T-
`
`Mobile IPR. 37 C.F.R. § 42.100(b). The proper construction standard is the
`
`Phillips framework because the ’210 patent has expired. Nevertheless, applying
`
`the Phillips standard should have no impact in considering and instituting
`
`Samsung’s Petition because the relevant claims deserve the same scope under
`
`Phillips. The following claim terms should be construed as set forth below.
`
`1.
`
`A .
`
`.
`
`. transmitter (Claims 1 and 10)
`
`Independent claims 1 and 10 recite “a .
`
`.
`
`. transmitter.” Petitioner
`
`acknowledges that a district court has construed this term to have its plain
`
`meaning with the understanding that transmitting multiple signals or outputs
`
`from a single structural unit is n_ot itself sufficient to constitute a plurality of
`
`transmitters. See Ex. SAM1004 at 6; see also, Ex. SAM1005 at 10 (adopting
`
`Clearwire constructions); Ex. SAM1006 at 11 (same); Ex. SAM1007 at 10
`
`(same).
`
`In the Samsung Litigation, Petitioner has requested the court to construe a
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`transmitter as “a structural unit for generating and modulating a signal to be
`
`transmitted.” This construction is consistent with the court’s rulings where the
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`court has indicated that a transmitter is a structural unit. See EX. SAMlO04 at 6;
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`Ex. SAM1005 at 10; Ex. SAMIOO6 at 11; Ex. SAM1007 at 10.This
`
`construction is also consistent with the understanding of a person having
`
`ordinary skill in the art and is supported by both the intrinsic and extrinsic
`
`evidence. Specifically, compare Fig. 15 of the ’210 patent, which discloses a
`
`Receiver, Transmitter, and Antenna, with Figs. 17-18, which disclose a
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`Receiver and Antenna only. The ’210 specification describes these Figs. 17-18
`
`as “[a]n embodiment of the mobile unit [that] includes only receive capabilities,
`
`but does not include any transmit capabilities” Ex. SAM100l at 19:21-23
`
`(emphasis added). This indicates that at least in the context of the ’21 0 patent, a
`
`transmitter is a structural unit responsible for transmission that is separate from
`
`an antenna or a receiver. Also, in both conventional and technical dictionaries, a
`
`transmitter is defined as a structural unit that generates and modulates a signal
`
`to be transmitted through an antenna unit. See e. g., Ex. SAM1008, p. 1902
`
`(“Transmitter”); EX. SAM1009, p. 1140 (“Transmitter (2) (radio)”); Ex.
`
`SAM1010, p. 1644 (“radio transmitter”). Accordingly, Petitioner’s construction
`
`is proper.
`
`Moreover, despite Apple and T-Mobile’s request to construe the term to
`
`have its plain meaning, the Board construed a “transmitter (singular) as being
`
`capable of transmitting a plurality of carrier signals combined as a single output.”
`
`See Ex. SAM1011 at 8. Petitioner’s construction is similar to what the Board
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`previously adopted, construing a transmitter as a structural unit with a specific
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`functionality. Petitioner’s construction, therefore, does not meaningfully alter
`
`the analysis of the prior art references listed herein from the analysis the Board
`
`did in the Apple and T-Mobile IPRs. For the reasons above, Petitioner proposes
`
`that “a .
`
`.
`
`. transmitter” be construed to mean “a structural unit for generating
`
`and modulating a signal to be transmitted.”
`
`2.
`
`Means for transmitting a [] plurality of carrier signals
`(Claim 19)
`
`Independent claim 19 recites a “means for transmitting a first plurality of
`
`carrier signals” and “means for transmitting a second plurality of carrier signals.”
`
`In the Apple and T-Mobile IPRs, the Board construed the terms to have the
`
`functions of “transmitting a first plurality of carrier signals within the desired
`
`frequency band, each of the first plurality of carrier signals representing a
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`portion of the information signal substantially not represented by others of the
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`first plurality of carrier signals” and “transmitting a second plurality of carrier
`
`signals in simulcast with the first plurality of carrier signals, each of the second
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`plurality of carrier signals corresponding to and representing substantially the
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`same information as a respective carrier signal of the first plurality of carrier
`
`signals” respectively. The Board also construed the corresponding structures to
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`be “a base transmitter corresponding to the embodiments as shown and
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`described in Figures 13 and 14 of the ’2l0 patent and equivalents.” See Ex.
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`SAMl0ll at 9; see also, Ex. SAMl00l at 15:47-16:30; Figs. 13-14.
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`Petitioner notes that a district court applying the Phillips standard has
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`construed the terms identically to how the Board construed them in the Apple
`
`and T-Mobile IPRs. See Ex. SAM1005 at 31-32. Indeed, Patent Owner has also
`
`agreed to, or did not dispute, this construction in its district court proceeding.
`
`See Ex. SAM1006 at 56; Ex. SAMIOO7 at 26. In the Samsung Litigation,
`
`Petitioner has requested the court to construe the term, “transmitting a second
`
`plurality of carrier signals in simulcast with the first plurality of carrier signals,”
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`identically to how the court and the Board have construed it, with an exception
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`of adding “geographically separated” language to the corresponding structure
`
`for the term. This construction is fully supported and required by the intrinsic
`
`evidence. Also, it does not contradict the Court or the Board. In particular,
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`the ’210 specification describes that “base transmitters [see Figs. 13-14] are
`
`divided into zonal assignments and broadcast in simulcast using multi-carrier
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`modulation techniques.” Ex. SAM1001, Abstract. These base transmitters are
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`“spatially separated.” Ex. SAM1001 at 8:62-64; Fig. 6.
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`The ’21O specification fiarther describes that an object of the invention is
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`“to provide a zone based simulcast communication system which can
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`effectively communicate with both mobile transceiver units located near the
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`center of each zone as well as mobile transceiver units located within the
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`overlap areas between two or more zones.” Ex. SAM1001 at 4:62-67
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`(Summary of the Invention) (emphasis added); Fig. 1. Indeed, all embodiments
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`of the ’210 patent disclose each and every transmitter defining a zone is
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`geographically separated.
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`Additionally, the ’210 patent repeatedly discusses how the purported
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`invention relates to providing a communication service over a relatively large
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`area with wide area coverage by employing multiple transmitters in simulcast.
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`See e. g., EX. SAMl0Ol at 1:11-14 (Field of Invention); 4:44-48 (Summary of
`
`the Invention). In light of these disclosures, a person having ordinary skill in the
`
`art would have understood that at least a second transmitter must be
`
`geographically separated from a first transmitter, and such an understanding was
`
`indeed common in the field at the time. See e. g., Ex. SAM1012 at 1:12-35; Ex.
`
`SAMlOl3 at 2:1-8; Kakaes Decl. at 1116.
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`Nevertheless, the “geographically separated” language does not
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`meaningfully affect the overall analysis, or the Board’s decision to institute in
`
`the Apple and T-Mobile IPRs because, as more fully described below, the prior
`
`art references listed herein clearly disclose geographically separated transmitters.
`
`For purposes of this PTO proceeding, Petitioner proposes that “means for
`
`transmitting a first plurality of carrier signals” and “means for transmitting a
`
`second plurality of carrier signals” have the fimctions of “means for
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`transmitting a first plurality of carrier signals within the desired frequency band”
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`and “means for transmitting a second plurality of carrier signals in simulcast
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`with the first plurality of carrier signals,” respectively. With respect to the
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`corresponding structures, Petitioner proposes “base transmitter 1300 including
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`data input 1302, control logic 1304, modulators 1306-1314, combiner 1316,
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`power amplifier 1318, and an antenna 1320, as depicted in Figure 13; and
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`equivalents thereof’ or “base transmitter 1400 including data input 1402,
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`control logic 1404, modulators 1406-1414, power amplifiers 1416-1424,
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`combiner 1426, and an antenna 1428, as depicted in Figure 14; and equivalents
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`thereof” for the first term; and “at least a second geographically separated
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`base transmitter 1300 including data input 1302, control logic 1304, modulators
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`1306-1314, combiner 1316, power amplifier 1318, and an antenna 1320, as
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`depicted in Figure 13; and equivalents thereof’ or “at least a second
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`geographically separated base transmitter 1400 including data input 1402,
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`control logic 1404, modulators 1406-1414, power amplifiers 1416-1424,
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`combiner 1426, and an antenna 1428, as depicted in Figure 14; and equivalents
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`thereof’ for the second term.
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`3.
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`In simulcast (Claims 1, 10, 19)
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`Independent claims 1, 10, and 19 recite “in simulcast.” Petitioner agrees
`
`with the construction that the Board adopted in instituting the Apple and T-
`
`Mobile IPRS: “at the same time.” See Ex. SAM1011 at 10.
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`The district court has construed this term the same way. See Ex.
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`SAM1006 at 23; Ex. SAM1004 at 4; Ex. SAM1005at 15, 74. Patent Owner has
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`also proposed or agreed to this construction in its district court proceedings. See
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`Ex. SAM1006 atl7; Ex. SAMl005 at 15; see also, Ex. SAM1007 at 39.
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`Therefore, for purposes of this PTO proceeding, Petitioner proposes the
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`term “in simulcast” to mean “at the same time.”
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`IV.
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`SUMMARY OF THE ’210 PATENT
`
`A.
`
`Brief Description
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`The ’2l0 patent contains 3 independent and 16 dependent claims that
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`each relate to combining multi-carrier modulation and simulcast broadcasting
`
`techniques. The patent’s Abstract describes the invention as follows:
`
`A two-way communication system for communication betw[]een a
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`system network and a mobile unit. The system network includes a
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`plurality of base transmitters and base receivers include[d] in the
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`network.
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`.
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`. The system network controls the base transmitters to
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`broadcast
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`in s[]imulcast during both systemwide and zone
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`boundaries to maximize information throughout [sic, throughput].
`
`Ex. SAM1001, Abstract.
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`The specification continues:
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`Generally, simulcast
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`technology provides multiple transmitters,
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`operating on substantially the same frequencies and transmitting
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`the same information positioned to cover extended areas.
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`.
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`. The
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`base transmitters of the communication system, such as base
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`transmitters 612 and 614 shown in FIG. 6, preferably utilize a
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`multi- carrier modulation format as will now be described. In
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`general,
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`a multi-carrier modulation
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`format
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`envisions
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`the
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`simultaneous
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`transmission of several
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`closely spaced carrier
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`frequencies within a desired frequency band, each individually
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`modulated to convey an information signal. The multi-carrier
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`modulation format advantageously allows for high data transfer
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`rates by providing good bit rate transmission rates while keeping
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`below the baud rate
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`limitations of
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`simulcast
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`transmission
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`techniques.
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`Ex. SAM1001 at 1:52-55; 13:3-14.
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`The 3 independent claims (claims 1, 10, and 19) and 5 dependent claims
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`(claims 7-8, and 15-17) of the ’2l0 patent are challenged herein.
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`V. MANNER OF APPLYING CITED PRIOR ART TO EACH
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`CLAIM FOR WHICH AN IPR IS REQUESTED, THUS
`ESTABLISHING A REASONABLE LIKELIHOOD THAT AT
`
`LEAST ONE CLAIM OF THE ’210 PATENT IS
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`UNPATENTABLE.
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`During prosecution, the Examiner of the ’21 0 patent found that:
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`[T]he prior art of record fails to show a multicarrier simulcast
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`transmission system comprising the first and second transmitters
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`for simultaneously transmitting the same information signals. The
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`system comprises a plurality of carrier signals in each of the
`
`transmitters wherein each of the carrier signals represent a portion
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`of the information signal not represented by others of the plurality
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`carrier signals.
`
`Ex. SAMl014, p. 261. As presented below, Witsaman in view of Bingham
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`discloses this combination of features and the remaining features of the
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`Challenged Claims. Accordingly, because the Patent Owner’s purported
`
`invention was known in the art prior to the earliest possible priority date of
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`NY245347839v2
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`12
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`the ’210 patent, the section below will establish a reasonable likelihood that the
`
`Challenged Claims are unpatentable.
`
`A.
`
`[GROUND 1] — Witsaman in view of Bingham Render
`Claims 1, 7-8, 10, 15-17, and 19 Obvious
`
`Witsaman, in its “System Overview” section, describes its invention as “a
`
`simulcast broadcast system 20” for broadcasting pages within a publicly
`
`switched telephone network (PSTN). Ex. SAM1012, 7:5-9. The system, as
`
`illustrated in FIG. 2 of the reference, is disclosed as being “capable of
`
`forwarding pages for simulcast to the stations 30 located in one or more wide
`
`area groups (WAGS) 37 of stations,” which can include a plurality of “Local
`
`Area Groups (LAGs).” Ex. SAM1012, 7:40-43. And, crucially, the individual
`
`stations operate in what Witsaman describes as simulcast—that is, “[t]he
`
`individual stations 30 will all broadcast the same paging signal at the same time.”
`
`Ex. SAM1012, 7:33-35. A person of ordinary skill in the art would understand
`
`that such a “simulcast” system must have worked by modulating multiple
`
`carrier signals by the same information signal. See id. (emphasis added). FIG. 2,
`
`as annotated by Dr. Kakaes, further illustrates Witsaman’s simulcast operation.
`
`See Kakaes Decl. at 1] 21.
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`NY 245347839v2
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`13
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`
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`LOCAL .II!F.'A I/‘IDUPI gm
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`“OIL ARE!
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`IIEBUP, M
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`
`As demonstrated, transmitter A and transmitter B—each located within
`
`Local Area Group 1 of Wide Area Group 37——“broadcast the same paging
`
`signal at the same time” to pager X. See Ex. SAM1012, 7:33-39; see also
`
`Kakaes Decl. at 1] 21.
`
`Next, Witsaman discloses that “stations 30” each contain at least one
`
`“[t]ransmitter 34” that “is capable of broadcasting signals in any format in
`
`which they can be processed by the complementary pagers 29.” Ex. SAM1012,
`
`7:54-62. In other words, Witsaman does not require that the transmitters used to
`
`implement the disclosed simulcast system be limited to any particular type of
`
`modulation or coding. See Kakaes Decl. at 1] 22. Accordingly, as described by
`
`Dr. Kakaes, while Witsaman discloses that the “control information” (see, e. g.,
`
`Ex. SAM1012, 7:18-21) and “status information” (see, e. g., Ex. SAM1012,
`
`8:11-14) required to operate the system are integral to simulcast transmission,
`
`the “format” in which the signal is broadcast by the individual transmitters 34 is
`
`not. See id.
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`NY 245347839v2
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`14
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`
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`As a result, because Witsaman describes broadcasting signals in any
`
`format, or modulation scheme, in which they can be processed (see Ex.
`
`SAM1012, 7:55-60), it would 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. See Ex.
`
`SAM1015, p. 5 (e.g., Quadrature Amplitude Modulation (QAM)); Kakaes Decl.
`
`at 1] 23.
`
`In particular, Bingham first describes the benefits of replacing older
`
`General Switched Telephone Networks like Witsaman’s PSTN system with an
`
`MCM transmission method. See EX. SAM1015, p. 5; see also Kakaes Decl. at 11
`
`23. Next, Bingham motivates integration of its MCM methods into Witsaman’s
`
`system through its disclosure of several potential benefits, including: “first, that
`
`an MCM signal can be processed in a receiver without the enhancement (by as
`
`much as 8 dB in some media) of noise or interference that is caused by linear
`
`equalization of a single-carrier signal, and second, that the long symbol time
`
`used in MCM produces a much greater immunity to impulse noise and fast
`
`fades.” Ex. SAM1015, p. 5; see also Kakaes Decl. at 1] 23. In addition to these
`
`motivations, Bingham promotes implementation into Witsaman by specifically
`
`disclosing how such an MCM technique could be implemented into a General
`
`Switched Telephone Network (e.g., Witsaman’s PSTN). See Ex. SAM1015, pp.
`
`13-14; see also Kakaes Decl. at 1] 24. Specifically, Bingham explicitly provides
`
`NY 245347839v2
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`15
`
`
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`design requirements and performance parameters of MCM transmitters and
`
`receivers on a GSTN network. See Ex. SAMl0l5, p. 13 (“The constants of
`
`proportionality are each between 6 and 8, Ne is typically 30, and in one widely
`
`used implementation of MCM for use on the GSTN, Nm, = 512.”) (emphasis
`
`added); see also Kakaes Decl. at 1] 24.
`
`As described by Dr. Kakaes, one of ordinary skill in the art at the time of
`
`the ’210 patent’s filing would have possessed both the motivation and the
`
`wherewithal to integrate Bingham’s multicarrier modulation technique (MCM)
`
`into Witsaman’s simulcast transmission system. See Kakaes Decl. at 1] 25. In
`
`fact, analogous art confirms that the simultaneous transmission of MCM signals
`
`from geographically dispersed transmitters (like in Witsaman) was already well
`
`known in the art prior to the ’2l0 priority date. See Kakaes Decl. at 1] 25.
`
`Indeed, an article by Bernard Le Floch entitled Digital Sound Broadcasting to
`
`Mobile Receivers, 35 IEEE Transactions on Consumer Electronics 493 (Aug.
`
`1989) (“Le Floch”) (attached as Ex. SAM10l6), taught this very concept. Ia’.
`
`For example, Le Floch describes a broadcasting service in which a plurality of
`
`COFDM transmitters “would be temporally synchronized and would all
`
`transmit the same signal.” Ex. SAM10l6, p. 9, § 7; see also Kakaes Decl. at 1]
`
`25. COFDM is a subset of MCM technology. See Kakaes Decl. at 1] 25.
`
`Compatibility with Witsaman having been established, and as described
`
`by Dr. Kakaes, one skilled in the art would have had both the motivation and
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`NY 245347839v2
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`16
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`
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`the wherewithal to replace Witsaman’s transmitters 34 and pagers 29 with the
`
`MCM modems described by Bingham in such a way as to make unpatentable
`
`the Challenged Claims of the ’210 patent. See Kakaes Decl. at 1} 25. Such a
`
`system would utilize MCM-enabled transmitters, dispersed throughout a
`
`geographic area, to “broadcast the same paging signal at the same time” using
`
`multiple carrier signals as contemplated by Bingham instead of the single
`
`carrier signals contemplated by Witsaman. See Ex. SAMl0l2, 7:33-35; see also
`
`Kakaes Decl. at 1] 26.
`
`Specifically, Bingham describes that “[i]nput data at Mfi b/s are grouped
`
`into blocks of M bits at a block (‘symbol’) rate off5. The M bits are used, mn
`
`bits for the carrier atfc,,, to modulate NC carriers, which are spaced Af apart
`
`across any usable frequency band.” Ex. SAMl0l5, p. 5. Furthermore, FIG. 2 of
`
`Bingham, as annotated by Dr. Kakaes, illustrates a simple MCM signal output
`
`by one of Bingham’s transmitters, where the number of carriers (NC) is three.
`
`See Kakaes Decl. at 1] 28.
`
`Fig. 2. MCM :mn.mu'r powr Jpertra.
`
`(G) QASK lainowdf ~ nu? functions
`
`Accordingly, one of ordinary skill in the art would have understood
`
`Bingham to describe a system whereby each MCM-enabled transmitter is
`
`NY 245347839v2
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`17
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`
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`configured to transmit a plurality (No) of carrier signals. See Kakaes Decl. at 1]
`
`27.
`
`With respect to the other relevant limitations of the Challenged Claims of
`
`the ’2l0 patent, Bingham describes that “[i]nput data at Mfs b/s are grouped into
`
`blocks of M bits” and “M bits are used .
`
`.
`
`. to modulate NC carriers.” Ex.
`
`SAM10l5, p. 5. One of ordinary skill in the art would have understood this
`
`disclosure to mean that each of Bingham’s NC carrier signals represent a portion
`
`of the information signal substantially not represented by others of the carrier
`
`signals, as required by the ’2l0 patent. See id; see also Kakaes Decl. at ‘H 27.
`
`Thus, when implemented into Witsaman’s simulcast system, a plurality of
`
`Bingham’s MCM—enabled transmitters would each broadcast a plurality of
`
`carrier signals—each representing a portion of the information signal
`
`substantially not represented by others of that group of carrier signals—that
`
`represent substantially the same information as corresponding carrier signals
`
`from the other pluralities of carrier signals being broadcast in simulcast from
`
`transmitters in a given region. See Ex. SAM10l2, 7:33-35; see also Kakaes
`
`Decl. at ‘H 27.
`
`Finally, the structure of the transmitters described by Bingham is the
`
`same as the transmitter shown in FIG. 13 of the ’2l0 patent. See Kakaes Decl. at
`
`1} 29. FIG. 1 of Bingham, as annotated by Dr. Kakaes, highlights the relevant
`
`elements of the transmitter. See Kakaes Decl. at 1] 29.
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`NY245347839v2
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`18
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`
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`Modulators
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`
`
`Though FIG. 1 of Bingham does not illustrate control logic, a power
`
`amplifier, or an antenna, one of ordinary skill in the art would have readily
`
`appreciated the existence of each within the transmitter. First, with regard to the
`
`control logic, Bingham’s narrative in reference to the figure implicitly requires
`
`such a circuit element. See Ex. SAM101 5, p. 6 (“modem data communication
`
`systems .
`
`.
`
`. use any combination of compression, error correction, and flow
`
`control”); see also Kakaes Decl. at 1] 30. Next, with regard to the power
`
`amplifier and antenna, as described above with regard to Nakamu
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