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 IPR2015-01726
`Patent 5,659,891
`
`____________
`
`
`
`PATENT OWNER MOBILE TELECOMMUNICATIONS
`TECHNOLOGIES, LLC’S PRELIMINARY RESPONSE
`
`
`
`Mail Stop "PATENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`

`
`
`
`TABLE OF CONTENTS
`
`Page
`
`
`BACKGROUND ............................................................................................. 1
`I.
`INTRODUCTION ........................................................................................... 2
`II.
`III. PROPER CLAIM CONSTRUCTION ............................................................ 4
`A.
`Construction of Independent Claim Terms ........................................... 9
`1.
`“single mask-defined, bandlimited channel” of claims 1,
`3, and 5 ........................................................................................ 9
`“band edge” of claims 1, 3, and 5 ............................................. 14
`2.
`“operating” of claims 1, 3, and 5 .............................................. 28
`3.
`“each adjacent carrier” of claims 1, 3, and 5 ............................ 28
`4.
`IV. REFERENCES RELIED UPON BY PETITIONER .................................... 29
`A.
`Petrovic................................................................................................ 29
`B.
`Raith .................................................................................................... 33
`C.
`Alakija.................................................................................................. 33
`EMISSION MASK GROUND 1 – CLAIMS 1-5 ARE NOT
`ANTICIPATED BY PETROVIC. ................................................................. 34
`A.
`Petrovic does not anticipate claims 1, 3, and 5. .................................. 34
`1.
`Petitioner’s argument ................................................................ 35
`2.
`Patent Owner’s Argument ......................................................... 39
`FIG. 1 of Petrovic does not disclose “operating or
`i.
`transmitting said carriers… such that the frequency
`difference between the center frequency of the
`outer most of said carriers and the band edge of the
`mask … is more than half the frequency difference
`between the center frequencies of each adjacent
`carrier,” if the “band edge” is interpreted under
`Phillips ............................................................................ 40
`FIG. 1 of Petrovic does not disclose “operating or
`transmitting said carriers… such that the frequency
`difference between the center frequency of the
`
`V.
`
`
`
`ii.
`
`

`
`
`
`iii.
`
`outer most of said carriers and the band edge of the
`mask … is more than half the frequency difference
`between the center frequencies of each adjacent
`carrier,” because not all adjacent carriers operating
`at the same time .............................................................. 52
`Petrovic does not disclose “operating or
`transmitting said carriers from the same location,”
`which Petitioner admits .................................................. 53
`Petrovic does not anticipate dependent claims 2 and 4. ..................... 55
`B.
`VI. GROUND 2 – CLAIM 5 IS NOT OBVIOUS OVER PETROVIC IN
`VIEW OF RAITH AND ALAKIJA. ............................................................... 55
`A.
`Petrovic in view of Raith and Alakija does not render claim 5
`obvious. ............................................................................................... 55
`VII. CONCLUSION .............................................................................................. 58
`
`
`
`

`
`
`
`TABLE OF AUTHORITIES
`
`Page
`
`CASES
`Advanced Display Sys. Inc. v. Kent State Univ., 212 F.3d 1272 (Fed. Cir.
`2000) ................................................................................................................... 34
`Ex parte Frye, 94 USPQ 2d 1072 (BPAI 2010) ...................................................... 57
`Ex parte Papst-Motoren, 1 USPQ2d 1655 (Bd. Pat. App. & Inter. 1986) ................ 5
`Ex Parte Ronald A. Katz Tech. Licensing L.P., Appeal 2008-005127 (BPAI
`Mar. 15, 2010)....................................................................................................... 6
`In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 70 USPQ2d 1827 (Fed.
`Cir. 2004) .............................................................................................................. 7
`In re Kahn, 441 F.3d 977 (Fed. Cir. 2006) .............................................................. 57
`In re Morris, 127 F.3d 1048, 44 USPQ2d 1023 (Fed. Cir. 1997) ............................. 6
`In re Royka, 490 F.2d 981 (CCPA 1974) ................................................................ 55
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) ................................................ 57
`Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359 (Fed. Cir. 2008) ..................... 34
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) ................................. passim
`Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298 (Fed. Cir. 1999) ........... 7
`Power Integrations, Inc. v. Michelle K. Lee, Director, USPTO, Case 2014-
`1123 (Fed. Cir. Decided August 12, 2015) ................................................ 5, 8, 41
`Vitrionics Corp. v. Conceptronic, 90 F.3d 1576 (Fed. Cir. 1996) ............................. 6
`Xerox Corp. v. 3Com Corp., 458 F.3d 1310 (Fed. Cir. 2006) ................................. 34
`
`OTHER AUTHORITIES
`
`35 United States Code § 102 ...................................................................................... 1
`35 United States Code § 103 ...................................................................................... 1
`Manual of Patent Examining Procedure § 2111.01 ................................................... 7
`Manual of Patent Examining Procedure § 2558 ........................................................ 5
`
`
`
`
`iii
`
`

`
`
`
`2001.
`
`2002.
`
`2003.
`
`2004.
`
`2005.
`
`PATENT OWNER EXHIBIT LIST
`
`47 C.F.R. s 22.106 Code of Federal Regulations.
`
`Comments of Mobile Telecommunication Technologies Corporation.
`
`Federal Communications Commission (F.C.C.) Notice of Proposed
`Rule Making and Tentative Decision, November 9, 1992.
`
`Federal Communications Commission (F.C.C.) Amendment of the
`Commission’s Rules to Establish New Narrowband Personal
`Communications Services.
`
`Expert Declaration of Paul S. Min, Ph.D., regarding the Constructions
`of Certain Claim Limitations of U.S. Patent Nos. 5,659,891 and
`5,809,428.
`
`2006.
`
`Supplemental Declaration of Dr. Jay P. Kesan.
`
`iv
`
`
`
`
`
`

`
`
`I.
`
`BACKGROUND
`
`On August 13, 2015, Samsung Electronics Co., Ltd. filed a Petition for Inter
`
`Partes Review under 37 C.F.R. § 42.100, requesting inter partes review of claims
`
`1-5 of the ’891 Patent on two grounds. Petitioner asserts that claims 1-5 of the
`
`’891 Patent are unpatentable over the following references under 35 U.S.C. §§ 102
`
`and 103:
`
`Ground 1 - Claims 1-5 as anticipated by Petrovic; and
`
`Ground 2 - Claim 5 as obvious over Petrovic in view of Raith and Alakija.
`
`The ‘891 Patent, entitled “Multicarrier Techniques
`
`in Bandlimited
`
`Channels,” was filed on June 7, 1995 and issued on August 19, 1997. The ‘891
`
`Patent expired on June 7, 2015.
`
`The ‘891 Patent describes and claims methods for multicarrier modulation
`
`using co-located transmitters to achieve higher transmission capacity for mobile
`
`paging and two-way digital communication in a manner consistent with FCC
`
`emission mask limits. Ex. 1001 at Abstract. One technique disclosed in the ‘891
`
`Patent is a method of operating at least two paging carriers in a single mask-
`
`defined, bandlimited channel by transmitting the carriers in a way that the
`
`frequency difference between the center frequency of the outer most carrier and the
`
`band edge of the mask defining the channel is more than half the frequency
`
`difference between the center frequencies of each adjacent carrier. See the ‘891
`
`1
`
`

`
`
`Patent, Ex. 1001, claims 1, 3, and 5. Below this recitation of the frequency
`
`difference between the center frequency of the outer most carrier and the band
`
`edge of the mask as disclosed in claims 1, 3, and 5 is referred to as the “frequency
`
`difference limitation.”
`
`II.
`
`INTRODUCTION
`
`Patent Owner, Mobile Telecommunications Technologies, LLC, submits this
`
`Preliminary Response to the Petition for Inter Partes Review of claims 1-5 of U.S.
`
`Patent No. 5,659,891 (“the ‘891 Patent”). 37 C.F.R. § 42.107.
`
`Patent Owner respectfully requests that the Board deny the Petition on every
`
`ground alleged by Petitioner for, at least, the following reasons.
`
`First, with regard to Ground 1, Dr. Rade Petrovic et al., Permutation
`
`Modulation for Advanced Radio Paging, IEEE Proceedings of Southeastcon ‘93 (7
`
`April, 1993) (Ex. 1013, “Petrovic”) does not teach, at least, (i) “operating or
`
`transmitting said carriers… such that the frequency difference between the center
`
`frequency of the outer most of said carriers and the band edge of the mask … is
`
`more than half the frequency difference between the center frequencies of each
`
`adjacent carrier;” and (ii) “operating or transmitting said carriers from the same
`
`location.” Dependent claims 2 and 4 are not anticipated by Petrovic, because
`
`independent claims 1 and 3, from which they depend respectively, are not
`
`anticipated by Petrovic and because of the additional features they recite.
`
`
`
`2
`
`

`
`
`
`In regard to limitation (i), the ‘891 Patent has expired requiring claim
`
`construction under district court rules. Patent Owner has adopted a district court’s
`
`interpretation of “band edge,” which the U.S. Court of Appeals for the Federal
`
`Circuit (“the CAFC”) has recently ruled the Board must, at least, assess. Patent
`
`Owner submits that under the district court’s interpretation of “band edge,”
`
`Petrovic cannot teach limitation (i).
`
`In addition, Petrovic does not teach limitation (i), because when operating,
`
`the difference between the center frequencies of adjacent carriers is much larger
`
`that the Petitioners suggests. In other words, the difference between the center
`
`frequencies of adjacent carriers varies under operating conditions. This means that
`
`when operating the frequency difference between the center frequency of the outer
`
`most carriers and any part of the “band edge” of the mask shown in FIG. 1 of
`
`Petrovic is not more than half the frequency difference between the center
`
`frequencies of each adjacent carrier.
`
`In regard to limitation (ii), Petrovic does not disclose operating or
`
`transmitting all of the carriers from the same location. This is even admitted by
`
`Petitioner.
`
`Second, with regard to Ground 2, Petrovic does not teach limitations (i) and
`
`(ii) of claim 5, as described above. Therefore, Petrovic does not teach claim 5.
`
`Raith and Alakija, either alone or in combination, do not cure the defect of
`
`
`
`3
`
`

`
`
`Petrovic with regard to limitation (i). With regard to limitation (ii), Raith and
`
`Alakija do not cure the defect of Petrovic for at least two reasons. First, Petitioner
`
`has provided no articulated reasoning with some rational underpinning to support
`
`the legal conclusion of obviousness. Second, the combination would render the
`
`purpose of Petrovic locating two transmitters at different locations inoperable.
`
`Therefore, there is no reasonable likelihood that Petitioner can prevail with
`
`regard to claims 1-5 of the ‘891 Patent.
`
`III. PROPER CLAIM CONSTRUCTION
`
`Claims 1-5 of the ‘891 Patent were most recently the subject of IPR2015-
`
`00018 (“the T-Mobile IPR”), which the Board joined with IPR2014-01035 (“the
`
`Apple IPR”). The Apple IPR was instituted on January 22, 2015. The T-Mobile
`
`IPR was joined with the Apple IPR and instituted on April 8, 2015. Both IPRs
`
`were terminated on May 28, 2015 in response to a joint request from Petitioner and
`
`Patent Owner.
`
`Since both the Apple IPR and the T-Mobile IPR were instituted and
`
`terminated, two important events have occurred regarding the proper claim
`
`construction of the ‘891 Patent. (1) The ‘891 Patent expired on June 7, 2015. This
`
`means that the proper claim construction is now the same as that used in district
`
`court review, rather than the broadest reasonable interpretation (BRI) used in
`
`patent prosecution by the USPTO and used in the Apple IPR and the T-Mobile
`
`
`
`4
`
`

`
`
`IPR. (2) The CAFC suggested on August 12, 2015 in Power Integrations, Inc. v.
`
`Michelle K. Lee, Director, USPTO, Case 2014-1123 (Fed. Cir. Decided August 12,
`
`2015) that the Board should assess a previous claim interpretation of a district
`
`court. Specifically, the CAFC found on August 12, 2015 that the “fact that the
`
`board is not generally bound by a previous judicial interpretation of a disputed
`
`claim term does not mean, however, that it has no obligation to acknowledge that
`
`interpretation or to assess whether it is consistent with the broadest reasonable
`
`construction of the term.” See Power Integrations, Inc., at 14. This means that
`
`Board should, at least, assess the claim construction of a district court if proffered
`
`by a party.
`
`In regard to (1) the claim construction of expired patents, MPEP 2258
`
`provides that “[i]n a reexamination proceeding involving claims of an expired
`
`patent, claim construction pursuant to the principle set forth by the court in Phillips
`
`v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005)
`
`(words of a claim “are generally given their plain and ordinary meaning” as
`
`understood by a person of ordinary skill in the art in question at the time of the
`
`invention) should be applied since the expired claims are not subject to
`
`amendment. See Ex parte Papst-Motoren, 1 USPQ2d 1655 (Bd. Pat. App. & Inter.
`
`1986).”
`
`
`
`5
`
`

`
`
`
`The ‘891 Patent has expired, and therefore, the claim terms should be
`
`construed according to the principles of Phillips, not under the broadest reasonable
`
`interpretation (BRI) standard. See Ex Parte Ronald A. Katz Tech. Licensing L.P.,
`
`Appeal 2008-005127 (BPAI Mar. 15, 2010).
`
`The first step in construing claims under Phillips is to “look to the words of
`
`the claims themselves.” Vitrionics Corp. v. Conceptronic, 90 F.3d 1576, 1582
`
`(Fed. Cir. 1996). Second, the specification must be considered when construing
`
`claim terms. Id. “[T]he specification is always highly relevant to the claim
`
`construction analysis. Usually, it is dispositive; it is the single best guide to the
`
`meaning of a disputed term.” Id.
`
`Claim construction under Phillips varies from the BRI standard in at least
`
`two important ways. First, the BRI standard includes a prohibition on reading
`
`limitations in the specification into the claims. In contrast, claim construction
`
`under Phillips does not include this prohibition. For example, “[t]he presumption
`
`that a term is given its plain and ordinary meaning may be rebutted by the
`
`applicant by clearly setting forth a different definition of the term in the
`
`specification. In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1028 (Fed.
`
`Cir. 1997) (the USPTO looks to the ordinary use of the claim terms taking into
`
`account definitions or other “enlightenment” contained in the written description);
`
`But c.f. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369, 70 USPQ2d 1827,
`
`
`
`6
`
`

`
`
`1834 (Fed. Cir. 2004) (“We have cautioned against reading limitations into a claim
`
`from the preferred embodiment described in the specification, even if it is the only
`
`embodiment described, absent clear disclaimer in the specification.”). MPEP
`
`2111.01.
`
`Second, the BRI standard does not rely heavily on extrinsic evidence. In
`
`contrast, when performing claim construction under Phillips, “it is entirely
`
`appropriate, perhaps even preferable, for a court to consult trustworthy extrinsic
`
`evidence to ensure that the claim construction it is tending to from the patent file is
`
`not inconsistent with clearly expressed, plainly apposite, and widely held
`
`understandings from the pertinent technical field.” Pitney Bowes, Inc. v. Hewlett-
`
`Packard Co., 182 F.3d 1298, 1309 (Fed. Cir. 1999).
`
`As described above, under Phillips the specification must be considered
`
`when construing claim terms. Instead, Petitioner mostly cites to other IPR
`
`proceedings, e.g., the Apple IPR and the T-Mobile IPR (which were previously
`
`terminated) 1 . Claim construction in the Apple IPR and T-Mobile IPR are
`
`irrelevant because the ‘891 Patent has expired and the standard has changed.
`
`Petitioner also refers to claim construction orders from district court cases,
`1
`
`e.g., Mobile Telecommunications Technologies, LLC v. Clearwire Corp.,
`
`Civil Action No. 2:13-cv-308-JRG-RSP (E.D. Tex.) (“Clearwire Order,” Ex.
`
`
`
`
`
`7
`
`

`
`
`
`In summary, under Phillips there is no prohibition on reading limitations in
`
`the specification into the claims, and it is entirely appropriate to consult
`
`trustworthy extrinsic evidence.
`
`In regard to (2), the role of claim interpretation by district courts in Board
`
`proceedings, Power Integrations, Inc. makes it clear that the Board should, at least,
`
`assess the claim interpretation of a district court. This ruling is particular
`
`important in this IPR, because the Board is not being asked to assess whether a
`
`district court’s construction is consistent with the BRI standard. Instead, the Board
`
`is being asked to assess whether a district court’s construction is consistent with
`
`the Board’s interpretation of claim construction under Phillips, which is the same
`
`standard used in district court review.
`
`
`1011), Mobile Telecommunications Technologies, LLC v. Sprint Nextel
`
`Corp., Civil Action No. 2:13-cv-832-JRG-RSP (E.D. Tex.) (“Sprint Order,”
`
`Ex. 1006), Mobile Telecommunications Technologies, LLC v. T-Mobile
`
`USA, Inc., et al., Civil Action No. 2:13-cv-886-JRG-RSP (E.D. Tex.) (“T-
`
`Mobile Order,” Ex. 1005), and Mobile Telecommunications Technologies,
`
`LLC v. Leap Wireless International Inc. et al., Civil Action No. 2:13-cv-
`
`885-JRG-RSP (E.D. Tex.) (“Leap Order,” Ex. 1007). Paper 2, at 5-8.
`
`
`
`8
`
`

`
`
`
`In summary, below Patent Owner proffers a district court’s construction of
`
`the term “band edge.” Supra, Section III(A)(2). Accordingly, the Board should, at
`
`least, assess whether this construction is consistent with the Board’s interpretation
`
`of claim construction under Phillips.
`
`A. Construction of Independent Claim Terms
`
`1.
`
`“single mask-defined, bandlimited channel” of claims
`1, 3, and 5
`
`Challenged claims 1, 3, and 5 recite a “single mask-defined, bandlimited
`
`channel.” Here, a “single mask-defined, bandlimited channel” means a “channel
`
`confined to a frequency range and power spectral density mask.”
`
`One of ordinary skill
`
`in
`
`the art understands
`
`that a channel
`
`in
`
`telecommunications “has a certain capacity for transmitting information, often
`
`measured by its bandwidth in Hz or its data rate in bits per second.”
`
`http://en.wikipedia.org/wiki/Channel_(communications). So, it is understood that
`
`by definition a channel has a bandwidth or frequency range.
`
`One of ordinary skill in the art at the time of the invention of the ’891 Patent
`
`would possess a bachelor’s degree in electrical or its equivalent and about four
`
`years working in the field of wireless telecommunications networks and would
`
`possess knowledge regarding frequency, amplitude, and masks as used in
`
`telecommunications, or equivalent education and work experience.
`
`
`
`9
`
`

`
`
`
`The plain and ordinary meaning of
`
`the
`
`term “bandlimited”
`
`in
`
`telecommunications is a band or bandwidth that is limited in some way. A
`
`bandlimited channel, therefore, is a channel whose bandwidth is further limited. A
`
`mask in telecommunications is known by one of ordinary skill in the art to be an
`
`emission mask or power spectral density mask. Because the bandlimited channel
`
`is defined by a single power spectral density mask and the channel already has a
`
`frequency range, the power spectral density mask must further limit the bandwidth
`
`of the channel. The specification also supports this construction.
`
`The ‘891 Patent describes and claims methods for “multicarrier modulation
`
`… consistent with FCC emission mask limits.” Ex. 1001 at Abstract. Further, as
`
`shown below, the ‘891 Patent provides that carriers operating at different
`
`frequencies are fit within a single bandwidth allocation consistent with FCC mask
`
`requirements.
`
`Ex. 1001 at 5:11-19 (emphasis added).
`
`
`
`
`
`10
`
`

`
`
`
`Further, an emission mask or power spectral density mask is defined in 47
`
`C.F.R. §22.99, for example, as “the design limits imposed, as a condition or
`
`certification, on the mean power of emissions as a function of frequency both
`
`within the authorized bandwidth and in the adjacent spectrum.” A power spectral
`
`density mask, therefore, specifies limits on power as a function of frequency.
`
`As described above, under Phillips the specification must be considered
`
`when construing claim terms.
`
`The ‘891 Patent explicitly discloses a single mask-defined, bandlimited
`
`channel in reference to FIG. 3A.
`
`Id. at 4:24-27 (emphasis added).
`
`FIG. 3A is shown below.
`
`
`
`
`
`11
`
`

`
`
`
`
`
`In FIG. 3A, the mask labeled 31 is explicitly described as a single mask-
`
`defined, bandlimited channel. Mask 31 is a “single” mask-defined, bandlimited
`
`channel, because it is one mask for two subchannels 30a and 30b. Mask 31 is a
`
`power spectral density mask, because it has a shape similar to some of the power
`
`spectral density masks discussed in the ‘891 Patent. For example, FIG. 4 is
`
`explicitly described as an emission mask.
`
`Id. at 3:16-18 (emphasis added).
`
`FIG. 4 is shown below.
`
`
`
`
`
`12
`
`

`
`
`
`Mask 31 further limits a channel by imposing power or attenuation limits on
`
`the original channel. For example, the ‘891 Patent describes an FCC emission
`
`mask further limiting the channel assigned to radio paging providers.
`
`
`
`
`
`Id. at 1:23-25 (emphasis added).
`
`When the power spectral density mask of FIG. 4 is applied to the 25 kHz
`
`channel of radio paging providers, the channel is further limited to attenuation of at
`
`least 70 dB at -10 kHz and +10kHz. In other words, the 25 kHz is further
`
`effectively limited to 20 kHz by the mask.
`
`
`
`13
`
`
`
`

`
`
`
`Id. at 4:47-49 (emphasis added).
`
`Patent Owner’s construction is supported by the patent specification, which
`
`discloses that “FCC masks typically require the power spectral density of a signal
`
`to be attenuated at least 70 dB at the band edge.” Id. at 1:59-61 (emphasis added).
`
`Therefore, under the Phillips standard, a “single mask-defined, bandlimited
`
`channel” means a “channel confined to a frequency range and power spectral
`
`density mask.”
`
`2.
`
`“band edge” of claims 1, 3, and 5
`
`Challenged claims 1, 3, and 5 recite a “band edge.” Here, the term “band
`
`edge” means “the innermost frequencies at which the mask requires attenuation of
`
`the signal.”
`
`In a Claim Construction Memorandum and Order (“the Leap Order”), the
`
`U.S. District Court for the Eastern District of Texas found that “a person of
`
`ordinary skill in the art would readily conclude that the ‘band edge’ frequencies are
`
`the innermost frequencies at which the mask requires attenuation of the signal.”
`
`Ex. 1007 at 35. This finding is entirely consistent with claim construction under
`
`Phillips.
`
`As described above, the first step in construing claims under Phillips is to
`
`“look to the words of the claims themselves. A “band” is well known to one
`
`skilled in communications as a group or collection of consecutive frequencies. An
`
`
`
`14
`
`

`
`
`“edge” is defined by the Merriam-Webster dictionary as the line or part where an
`
`object or area begins or ends. http://www.merriam-webster.com/dictionary/edge as
`
`of November 12, 2015. A band edge is, therefore, the line or part where a
`
`collection of frequencies begins or ends.
`
`Annotation 1 of FIG. 3B of the ‘891 Patent is shown below. Annotation 1 of
`
`FIG. 3B shows that the horizontal edge or line of the emission mask cannot be the
`
`band edge of claims 1-5 of the ‘891 Patent. The horizontal edge of the emission
`
`mask is a line showing where power attenuation (in dB) begins or ends. In other
`
`words, the horizontal edge of the emission mask is an edge with respect to the y-
`
`axis and not with respect to the x-axis (or frequency axis). The horizontal edge,
`
`therefore, cannot be the band edge.
`
`
`
`
`
`15
`
`

`
`
`
`HORIZONTAL 
`EDGE
`
`CENTER FREQUENCY 
`OF OUTER MOST 
`CARRIER 32a
`
`CENTER FREQUENCY 
`OF OUTER MOST 
`CARRIER 32b
`
`ANNOTATION 1
`
`
`
`The emission mask of FIG. 3B of the ‘891 Patent further includes two
`
`diagonal edges or lines and two vertical edges or lines, as shown below in
`
`Annotation 2 of FIG. 3B of the ‘891 Patent.
`
`DIAGONAL 
`EDGE
`
`VERTICAL 
`EDGE
`
`DIAGONAL 
`EDGE
`
`VERTICAL 
`EDGE
`
`CENTER FREQUENCY 
`OF OUTER MOST 
`CARRIER 32a
`
`CENTER FREQUENCY 
`OF OUTER MOST 
`CARRIER 32b
`
`ANNOTATION 2
`
`16
`
`
`
`
`
`

`
`
`
`Both the diagonal edges and the vertical edges of Annotation 2 could be
`
`band edges, because they are lines where a collection of frequencies begins or
`
`ends. In the Leap Order, the district court weighed arguments for interpreting the
`
`band edge to be any point along the diagonal edges and the vertical edges of
`
`Annotation 2. Ex. 1007 at 30-35. The court finally concluded that “a person of
`
`ordinary skill in the art would readily conclude that the ‘band edge’ frequencies are
`
`the innermost frequencies at which the mask requires attenuation of the signal” and
`
`“to whatever extent applying this interpretation to a particular mask may yield
`
`multiple relevant frequency differences, all such frequency differences must satisfy
`
`the claim limitations.” Id. at 35, 37. The court further provided the reproduction
`
`of FIG. 3B of the ‘891 Patent, shown below, that identified the relevant band edges
`
`frequencies with arrows. In other words, the court identified the inner most points
`
`of the diagonal edges of Annotation 2 as the band edges. Note that the court is not
`
`necessarily referring to a single point, but to a plurality of points.
`
`
`
`
`
`17
`
`

`
`
`
`The court then found that “the relevant points could vary from mask to
`
`mask, but on balance the specification provides sufficient context for a person of
`
`ordinary skill in the art to understand the ‘band edge’ with reasonable certainty.”
`
`Id. at 35. Again, as described above, the second step under Phillips is to consider
`
`the specification when construing claim terms. In addition, under Phillips there is
`
`no prohibition on reading limitations in the specification into the claims if those
`
`limitations are clearly set forth in a definition in the specification.
`
`Although the district court did not explicitly point to a definition in the
`
`specification that limited the band edge to innermost frequencies at which the mask
`
`requires attenuation of the signal, the definition is clearly there. For example, the
`
`specification of the ‘891 Patent provides in the passage shown below that the band
`
`edge is the “nearest” band edge to the center frequency of an outer most carrier.
`
`Note that this passage is a description of the frequency difference limitation of
`
`claims 1, 3, and 5.
`
`Ex. 1001 at 4:30-35 (emphasis added).
`
`The purpose of the frequency difference limitation is to specify how close to
`
`the mask the outer most carriers can be placed. The frequency difference
`
`
`
`
`
`18
`
`

`
`
`limitation does this by placing a limitation on the difference between the center
`
`frequency of each outer most carrier and the nearest band edge. As shown below
`
`in Illustration 1, a carrier is at its apex at the center frequency. Therefore, the
`
`frequency difference limitation is dependent on the band edge nearest the apex of
`
`each outer most carrier. As described above, a band edge is the line or part where
`
`a collection of frequencies begins or ends. The band edge nearest the apex of each
`
`outer most carrier is then the line or part nearest the apex of each outer most carrier
`
`in frequency. As show in Illustration 1, the nearest band edge is either direction d1
`
`or direction d2.
`
`
`
`CARRIER
`APEX
`
`DIRECTION d1
`NEAREST APEX IN
`FREQUENCY
`
`DIRECTION d2
`NEAREST APEX IN
`FREQUENCY
`
`CARRIER
`
`CENTER
`FREQUENCY
`OF CARRIER
`
`FREQUENCY
`
`ILLUSTRATION 1
`
`
`
`Now, consider Annotation 3 of FIG. 3B of the ‘891 Patent shown below.
`
`Instead of carriers 32a and 32b, suppose FIG. 3B has n narrow carriers that are
`
`spaced l frequencies apart. The nearest band edges are now those portions of the
`
`
`
`19
`
`

`
`
`diagonal edges of the mask that are nearest the apexes of the outer most carriers.
`
`These portions are also the innermost frequencies at which the mask requires
`
`attenuation as the district court described.
`
`The n narrow carriers of Annotation 3 are placed to meet the frequency
`
`difference limitation. The frequency difference between center frequencies of
`
`outer most carriers and the band edge is greater than half (l/2) the frequency
`
`difference (l) between the center frequencies of the carriers.
`
`BAND EDGE
`OR
`INNERMOST
`FREQUENCIES
`REQUIRING
`ATTENUATION
`
`DIAGONAL
`EDGE
`
`OUTER MOST
`CARRIER
`VERTICAL
`EDGE
`
`l
`
`l/2
`
`MASK
`
`...
`
`BAND EDGE
`OR
`INNERMOST
`FREQUENCIES
`REQUIRING
`ATTENUATION
`
`DIAGONAL
`EDGE
`
`l/2
`
`OUTER MOST
`CARRIER
`VERTICAL
`EDGE
`
`ANNOTATION 3
`
`
`
`As shown in Annotation 3, the band edges are those portions of the diagonal
`
`edges of the mask nearest the apexes of the outer most carriers and including the
`
`innermost frequencies at which the mask requires attenuation. Other portions of
`
`the diagonal edges or the vertical edges are not the nearest band edges.
`
`
`
`20
`
`

`
`
`
`Consider now if the band edges are not defined as the edges nearest the
`
`apexes of the outer most carriers. Suppose the band edges are just any band edges
`
`of the diagonal edges or the vertical edges of the mask where the frequency
`
`difference between the center frequencies of the outer most carriers and the band
`
`edge is greater than half the difference between the center frequencies of adjacent
`
`carriers.
`
`This case is explored in Annotation 4 of FIG. 3B of the ‘891 Patent shown
`
`below. In Annotation 4, the carriers are placed so that the frequency difference
`
`between the vertical edges of the mask and the center frequencies of the outer most
`
`carriers are greater than half of the frequency difference between the center
`
`frequencies of adjacent carriers.
`
`
`
`21
`
`

`
`
`
`BAND EDGE
`
`MASK
`
`DIAGONAL
`EDGE
`
`OUTER MOST
`CARRIER
`
`VERTICAL
`EDGE
`
`l
`
`l/2
`
`...
`
`DIAGONAL
`EDGE
`
`OUTER MOST
`CARRIER
`
`VERTICAL
`EDGE
`
`l/2
`
`ANNOTATION 4
`
`
`
`Annotation 4 shows that not using the band edges nearest the apexes of the
`
`outer most carriers that include the innermost frequencies at which the mask
`
`requires attenuation, allows the parts of the carriers to be outside of the mask. The
`
`purpose of the limitation is to keep the carriers and their modulated signals within
`
`the mask, while increasing the number of carriers. The number of carriers are
`
`increased to increase the bandwidth. Without defining the band edges as the edges
`
`nearest the apexes of the outer most carriers that include the innermost frequencies
`
`at which the mask requires attenuation, therefore, the purpose of the frequency
`
`difference limitation is defeated.
`
`
`
`22
`
`

`
`
`
`For example, one of the objectives of the ‘891 Patent was to increase the
`
`data transmission capacity of a bandlimited communications channel. See Ex.
`
`1001 at 1:11-25. One method used in the past was to increase the number of
`
`messages transmitted in a given period of time. Id. at 1:26-35. Another method
`
`used in past was to increase the transmission capacity of the channel itself using
`
`multicarrier modulation. Id. at 1:36-46. A problem with multicarrier modulation
`
`in the past was that the carriers were “symmetrically located within the channel
`
`such that they are evenly spaced relative to each other and to the band edges of the
`
`primary mask defining the primary ch